Appeal No. 2003-1920
Application No. 09/538,455
We first turn to the examiner’s rejection of claims 1
through 12, 20, 21 and 23 through 30 under 35 U.S.C. § 102(e) as
anticipated by the disclosure of Higdon. To establish
anticipation within the meaning of under Section 102, the
examiner must demonstrate that a single prior art reference
discloses, either expressly or under the principles of inherency,
each and every element of a claimed invention. See In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984).
We initially reverse the examiner’s Section 102(e) rejection
of claims 1 through 8, 20 through 24 and 26 through 30 for the
reasons well articulated by the appellants at pages 11 through 14
of their Brief. We only wish to emphasize that the examiner has
not pointed to any specific disclosure in Higdon, which describes
each and every feature recited in claims 1, 26 and 28.2 See the
Answer, pages 3 and 4. The examiner, for example, broadly refers
2 According to the appellants (Brief, page 10), claims 26
and 28 do not stand or fall together with claim 1. Although the
examiner agrees with the appellants that the “[B]rief includes a
statement that [the] claims do not stand or fall together and
provides reasons as set forth in 37 CFR [§] 1.192(c)(7) and
(c)(8),” we note that the examiner has not referred to any
limitations of claims 26 and 28. See the Answer in its entirety.
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