Appeal No. 2004-1863
Application 09/470,835
It is well settled that in making out a prima facie case of anticipation, each and every
element of the claimed invention, arranged as required by the claims, must be found in a single
prior art reference, either expressly or under the principles of inherency. See generally, In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); Diversitech Corp. v.
Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ 1315, 1317 (Fed. Cir. 1988); Lindemann
Maschinenfabrik GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984). It is further well settled that in order to establish a prima facie case of
obviousness under § 103(a), the examiner must show that some objective teaching, suggestion or
motivation in the applied prior art taken as a whole and/or knowledge generally available to one
of ordinary skill in this art would have led that person to the claimed invention as a whole,
including each and every limitation of the claims, arranged as required by the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics,
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fritch, 972 F.2d
1260, 1265-66, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed.
Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988).
The dispositive issue in this appeal is whether the language of appealed independent
claims 7 and 17, on which all other claims under rejection depend, encompass an apparatus in
which at least one nozzle and a monitoring receiver with associated energy source or emitter, are
located in separate sections of the apparatus (see answer, pages 6 and 7; brief, pages 6-7; reply
brief, pages 2-3 and 4). We determine that, when considered in light of the written description in
the specification, including the drawings, as interpreted by one of ordinary skill in this art, see,
e.g., In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz,
893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), the plain language of these
claims specifies that both the nozzle and the monitoring receiver with associated energy source
or emitter, must be positioned with respect to the same wafer receiving surface per se, and thus
both are in the same location in the apparatus as that surface. In this regard, we have considered
2 Answer, pages 4-6.
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