Appeal No. 2004-0070
Application No. 10/047,529
We therefore disagree with appellants that the references fail to teach or suggest
a control unit comprising a generation unit and an evaluation unit as set forth in instant
claim 1, as each of Feiner and Kahkoska discloses a generation unit and an evaluation
unit. In addition to the examiner’s findings with respect to the references,1 we find that
Kahkoska discloses a control unit as claimed, at least in the description of simultaneous
testing of upstream and downstream data traffic, with each of the test instruments
generating a signal and evaluating a separate received signal. In addition, we fail to
see, on this record, how claim 1 is not anticipated by the device and method described
by Kahkoska. In any event, a claim that is anticipated is also obvious under 35 U.S.C.
§ 103; anticipation is the epitome of obviousness. See, e.g., Connell v. Sears, Roebuck
& Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed. Cir. 1983); In re Fracalossi, 681
F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402,
181 USPQ 641, 644 (CCPA 1974).
It is not apparent why Kahkoska was not applied against other claims in the
application (e.g., broader claim 10, which also appears to be anticipated). Not listing
the reference in the rejections applied against claims depending from claims 1 and 18
appears to represent a mere oversight. In the event of further prosecution before the
1 We also note that Feiner disc loses a plurality of test signatures (col. 5, ll. 4-10).
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