Appeal No. 2004-0241 Page 4
Application No. 09/773,366
The Rejection Under Section 102
The examiner is of the view that the subject matter recited in claims 1, 2, 15 and
16 is anticipated by Schubert and has found, inter alia, that Schubert’s brake
arrangement 56 is operative to slow the speed of the feeder mechanism during stock
feeding (Answer, page 4). In response to the appellant’s challenge of this
determination, the examiner points to Schubert’s teaching that the gears of the feeding
mechanism can easily be changed, and then takes the position that “Schubert is
capable of at least two different feed speeds” and therefore “inherently teaches a
machine controller to control the various functions and elements of the machine tool,”
thus disclosing a machine controller that “is fully capable of functioning (braking during a
feeding operation) in the manner set forth in claim 1" (Answer, page 8).
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of the claimed
invention. See, for example, RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). A reference anticipates a claim if it
discloses the claimed invention such that a skilled artisan could take its teachings in
combination with his own knowledge of the particular art and be in possession of the
invention. In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995),
cert. denied, 116 S.Ct. 1362 (1996), quoting from In re LeGrice, 301 F.2d 929, 936,
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