Appeal No. 2003-0946
Application No. 08/904,137
relevant to the “decrypting,” data memory 43 may be used for storing “various data”
(col. 5, ll. 60-61). Further, the instruction data in that embodiment may contain a
function code, or the function code and data (col. 6, ll. 21-25; Figs. 16A and 16B).
However, Hirokawa does not disclose that the data transferred in the second
embodiment is for storage on the IC card in the form of an executable program, much
less decryption of a program for storage on the card.
Anticipation requires the presence in a single prior art reference disclosure of
each and every element of the claimed invention, arranged as in the claim. Lindemann
Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221
USPQ 481, 485 (Fed. Cir. 1984). We are persuaded by appellants that the examiner’s
finding of anticipation is in error. The rejection appears to be based on picking and
choosing elements described in separate embodiments of the reference, without
presenting any evidence to show a rationale from the prior art for combining the
features in such a way as to meet the terms of the invention that is claimed. “Even
when obviousness is based on a single prior art reference, there must be a showing of
a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
In any event, we agree with appellants that Hirokawa appears not to contemplate
decryption of data that is to be stored as an executable program on an IC card. The
reference, instead, purports improvements related to decryption of “instruction data”
transferred to the card. Col. 1, ll. 5-38. While the column 1 background section
-5-
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