Appeal No. 2003-0087 10
Application No. 09/512,164
Fontaine reasonably appears to be capable of being used in the manner set forth in the
claim.
In light of the foregoing, we will sustain the standing rejection of claim 1 under 35
U.S.C. § 103(a). We will also sustain the standing rejection of claims 5, 8, 12 and 15-17,
since claims 1, 5, 8, 12 and 15-17 stand or fall together.
Claim 2
Claim 2 depends from claim 1 and adds that the casing includes an air inlet for
allowing air to be applied within the casing to move the piston assembly and compress the
spring.
Like appellants, we understand Fontaine as disclosing an actuator having an inlet
(not numbered) connected to a hydraulic line 27 for allowing hydraulic fluid to be applied
within the casing to move the piston and compress the spring 30. Bearing in mind that we
have interpreted claim 1 as being directed to an actuator per se, we do not consider the
term “air inlet” and the statement of function associated therewith (“for allowing air to be
applied . . .”) of claim 2 as defining any structure that distinguishes the claimed subject
matter over the actuator of Fontaine. Thus, claim 2 “reads on” the actuator of Fontaine
such that the reference once again provides response for all claim limitations and
anticipates the claim.7
7The law of anticipation does not require that the reference teach specifically
what an appellant has disclosed and is claiming but only that the claims on appeal
(continued...)
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