Appeal No. 2003-0231 Page 5
Application No. 09/749,372
of paper as related to the microscope slides" is not understandable with a reasonable
degree of precision and particularity as required by the second paragraph of 35 U.S.C.
§ 112. This limitation is indefinite since it is not clear how the compartment is adapted
to control information on the at least one sheet of paper2 This rejection is based not on
the presence of functional language but on the inability of the claimed structure to be
able to perform that function (i.e., that the compartment is adapted to control
information on the at least one sheet of paper).
For the reasons set forth above, the decision of the examiner to reject claims 4
and 6 under 35 U.S.C. § 112. second paragraph, is affirmed.
The anticipation rejection
We sustain the rejection of claims 1, 3, 4, 6, 7, 13 and 14 under 35 U.S.C.
§ 102(b) as being anticipated by Yuen.
A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
2 Perhaps the appellant meant to claim that the compartment for the at least one sheet of paper
being adapted to control access to information on the at least one sheet of paper related to the
microscope slides.
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