Ex Parte Brown et al - Page 3




              Appeal No. 2004-1194                                                                Page 3                
              Application No. 09/580,880                                                                                


              respective positions articulated by the appellants and the examiner.  As a consequence                    
              of our review, we make the determinations which follow.                                                   


                     A claim is anticipated only if each and every element as set forth in the claim is                 
              found, either expressly or inherently described, in a single prior art reference.                         
              Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.                       
              Cir.), cert. denied, 484 U.S. 827 (1987).  The inquiry as to whether a reference                          
              anticipates a claim must focus on what subject matter is encompassed by the claim and                     
              what subject matter is described by the reference.  As set forth by the court in Kalman v.                
              Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.                        
              denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on' something                 
              disclosed in the reference, i.e., all limitations of the claim are found in the reference, or             
              'fully met' by it."                                                                                       


                     Claims 16 and 23, the independent claims subject to the anticipation rejection,                    
              read as follows:                                                                                          
                     16.    A roller adapted to rotate a thin disk, the roller comprising:                              
                            a groove having at least two surfaces adapted to contact an edge of the                     
                     thin disk; and                                                                                     
                            a plurality of holes formed in at least one of the two surfaces, the holes                  
                     being adapted to reduce a probability of trapping fluid between the thin disk and                  
                     the roller.                                                                                        








Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  Next 

Last modified: November 3, 2007