Appeal No. 2003-1402
Application No. 09/034,969
Section 102 rejection of claims 1-10, 14, 15, 17-19, 25, 26, and 30-32 as being
anticipated by Smith
Anticipation requires the presence in a single prior art reference disclosure of
each and every element of the claimed invention, arranged as in the claim. Lindemann
Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221
USPQ 481, 485 (Fed. Cir. 1984).
Ordinarily, reading a claim on separate embodiments described in a reference
would not support a finding of anticipation, but might be subject to an inquiry under
obviousness. Whether there is suggestion to combine elements or steps of different
embodiments is an inquiry under obviousness, rather than anticipation. “Even when
obviousness is based on a single prior art reference, there must be a showing of a
suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
The statement of the rejection of instant claims 1, 25, 26, and 30-32 (Answer at
4-6) appears to rely on different, distinct embodiments to show structures purported to
correspond to the claim. For example, the rejection begins, “a fuel dispenser (see
figure 8) having an order entry user interface (14 and 26)....” (Id. at 4.) However, card
reader 14 and card adapter 26 (Fig. 1a) in Smith are associated with a different
embodiment from that of Figure 8. The embodiment of Figure 8 does not contain card
readers or adapters, but utilizes memory 1b, with account number information
“automatically transferred between the vehicle 1 and the remote controller 20 during a
-6-
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