Appeal No. 2003-0213
Application No. 09/255,712
examiner finds that the regulating steps recited in these claims
are inherently met by the operation of Greul’s liquefier 23
and/or Goto’s liquefier-separator 14 (see, for example, pages 3
through 5 in the supplemental answer).
The appellants counter that “[t]he claims all recite, inter
alia, a regulating step, which by the plain meaning of the words
includes controlling; neither Gruel [sic] nor Goto describe or
are concerned with controlling the degree of charging of the
process by CO2 extraction” (main brief, page 7). In this vein,
the appellants further submit that “[t]here is a significant and
patentable difference between mere extraction of CO2 and
regulation of a CO2 cycle process by extracting CO2” (main brief,
page 6) and that “[r]egulation of a process by CO2 extraction
involves a degree of control which is absent from mere extraction
of CO2” (main brief, page 7).2
A prior art reference may anticipate without disclosing a
feature of the claimed invention if that missing characteristic
is necessarily present, or inherent, in the single anticipating
2 To support this line of argument, the appellants have
appended to the main brief a dictionary definition of the term
“regulate,” to wit: “1. To control or direct in agreement with a
rule. 2. To adjust in conformity to a requirement or
specification. 3. To adjust (a mechanism) for accurate and
correct operation.” Webster’s II, New College Dictionary
(Houghton Mifflin Company 1995).
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007