Appeal No. 2002-1236
Application No. 08/359,743
35 U.S.C. § 102
A patent is invalid for anticipation when the same device or method, having all of
the elements contained in the claim limitations, is described in a single prior art
reference. Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913,
1920 (Fed. Cir. 1989); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888,
894, 221 USPQ 669, 673 (Fed. Cir. 1984). An anticipating reference must describe the
patented subject matter with sufficient clarity and detail to establish that the subject
matter existed in the prior art and that such existence would be recognized by persons
of ordinary skill in the field of the invention. See In re Spada, 911 F.2d 705, 708, 15
USPQ 1655, 1657 (Fed. Cir. 1990); Diversitech Corp. v. Century Steps, Inc., 850
F.2d 675, 678, 7 USPQ2d 1315, 1317 (Fed. Cir. 1988).
Here, we find that the examiner has established a prima facie case of
anticipation. The examiner has addressed the claim limitations and shown where
Boudreau teaches the express limitations of independent claim 1. (See final rejection at
pages 2-3.) Appellants’ sole argument is that Boudreau sends a unique echo-back
request signal that corresponds to particular mobile units in contrast to appellants’
claimed invention which sends echo-back request signals that are common or generic
to all mobile units. (See brief at page 9.) The examiner maintains that common or
generic echo-back request signals are not recited in the language of independent claim
1. (See answer at page 3.) We agree with the examiner. Therefore, this argument is
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