Appeal No. 2002-2182
Application No. 09/223,565
rejection under 35 U.S.C. § 102(b), Appellants’ arguments are
directed solely to features which are set forth in independent
claim 1. Accordingly, we will select independent claim 1 as the
representative claim for the claims subject to the rejection under
35 U.S.C. § 102(b), and claims 3, 10, 11, and 13 will stand or fall
with claim 1. We will consider separately claim 2, subject to the
rejection under 35 U.S.C. § 103(a), since separate arguments for
patentability have been provided for this claim. Note In re King,
801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983). Only
those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but
chose not to make in the Brief have not been considered [see 37 CFR
§ 1.192(a)].
We consider first the Examiner’s 35 U.S.C. § 102(b) rejection
of claims 1, 3, 10, 11, and 13 based on Lemay. We note that
anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and
every element of a claimed invention as well as disclosing
structure which is capable of performing the recited functional
limitations. RCA Corp. v. Applied Digital Data Systems, Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed,
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007