Appeal No. 2003-1599
Application 09/494,028
a cap panel sized and configured to fit within the full top casket lid and puffing members
attached to said panel around a periphery thereof;
a first cap panel insert overlying said cap panel; and
second and third cap panel inserts positioned at opposite longitudinal ends of said first
cap panel insert and overlying said cap panel;
said first cap panel insert sized and configured to fit within and substantially completely
fill a dish assembly of a cut top casket;
said first, second and third cap panel inserts sized and configured to fit within and
substantially completely fill said full top casket dish assembly.
The examiner states that “[r]egarding claims 1, 10, and 19, per the current claim
language, a dish assembly of, and defined by, a cut top casket lid is not being positively claimed
and represents the intended use of the invention” because the language “sized and configured” is
not considered to be “a positive structural limitation” (answer, pages 4 and pages 5-6).
Appellants argue that the language must be given effect (brief, page 8, n.1; reply brief, page 3).
We agree with appellants. We determine that when the plain language of illustrative
claim 1 is considered in light of the specification and in the context of the claimed invention as a
whole, it is readily apparent that the claimed dish assembly encompasses a dish assembly
wherein the cap panel must be of a size and configuration to fit within the lid of a full top casket,
and the first cap panel insert of that cap panel must be of a size and a configuration to
substantially completely fill the dish assembly for the lid of a cut top version of that full top
casket.
Turning now to the application of Winburn and of the combined teachings of Winburn
and Cox in the first and third grounds of rejection to appealed independent claims 1, 10 and 19,
and appealed claims dependent thereon, it is well settled that in making out a prima facie case of
anticipation under § 102, each and every element of the claimed invention, arranged as required
by the claims, must be found in a single prior art reference, either expressly or under the
principles of inherency. See generally, In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ
1315, 1317 (Fed. Cir. 1988); Lindemann Maschinenfabrik GMBH v. American Hoist and
Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). It is further well settled that
in order to establish a prima facie case of obviousness under § 103(a), the examiner must show
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