Appeal No. 2004-1069 Page 3
Application No. 09/569,616
(Paper No. 17, mailed March 20, 2003) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 16, filed February 5, 2003) and
reply brief (Paper No. 18, filed May 27, 2003) for the appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the patent to Tai, and to the respective
positions articulated by the appellants and the examiner. As a consequence of our
review, we make the determinations which follow.
The anticipation rejection
We will not sustain the rejection of claims 1 to 3 and 5 under 35 U.S.C. § 102(b).
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a claimed
invention. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be no difference between
the claimed invention and the reference disclosure, as viewed by a person of ordinary
skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc.,
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