Appeal No. 2003-1146
Application No. 09/595,249
established only when a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed invention as well as
disclosing structure which is capable of performing the recited functional limitations.
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc.
v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984). Only those arguments actually made by appellant have
been considered in this decision. Arguments which appellant could have made but
chose not to make in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
With respect to independent claim 1, the examiner has indicated how he finds
the claimed invention to be anticipated by Freedman [answer, pages 4-5]. Appellant
argues that in the Freedman process, the estimate-related specifications never exist
simultaneously with the actual print job specifications, and, therefore, there can never
be a comparison of these two quantities. Appellant argues that the examiner
improperly equates the design template of Freedman with the claimed estimate-related
specifications and the inserted graphic with the claimed actual print job specifications
[brief, pages 14-15]. The examiner responds that the actual print job specification
corresponds to the requester’s specifications entered into the template, and the
estimate-related specifications correspond to the rules that govern how to print a job.
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