Appeal No. 2003-1654 Page 5
Application No. 09/439,310
page 11 of the answer to equate profitability with budget constraints is unsound. While
Eisner clearly recognizes the importance of cost considerations, thereby implying the
consideration of budgetary constraints, in the discussion of life-cycle costing, this does
not inherently require any consideration of profitability. A project may simply be
constrained by a particular dollar figure, without regard to profitability, thereby requiring
a project manager or services provider to account only for costs and not profit and loss.
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. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be no difference between
the claimed invention and the reference disclosure, as viewed by a person of ordinary
skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc.,
927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991). Inasmuch as we have
determined that the portions of Eisner relied upon by the examiner do not disclose,
either expressly or under the principles of inherency, the limitation in claim 1 of
establishing a baseline for the profit case, we cannot sustain the rejection of claim 1 or
claims 2 and 4 which depend from claim 1 as being anticipated by Eisner.
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