Appeal No. 2004-2032
Application No. 09/729,498
Concerning the § 102 rejection, it is well settled that
anticipation is established only when a single prior art reference
discloses, expressly or under principles of inherency, each and
every element of the claimed invention. RCA Corp. V. Applied
Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir. 1984). A finding of anticipation establishes that all
aspects of the claimed invention were already described (expressly
or inherently) in a single prior art reference, and such a finding
is not supportable if it is necessary to prove facts beyond those
disclosed in the reference in order to meet the claim limitations.
Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565,
1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991). Therefore, it is
also well settled that anticipation cannot be predicated on mere
conjecture. W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 314 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984).
It is the Examiner’s anticipation viewpoint that the
aforementioned computing means requirements of independent claims 1
and 24 are satisfied by the control means of Lewis. In this
regard, the Examiner cites the control means disclosure at lines
44-53 in column 6 of Lewis as support for his finding that “the
control means does have the ability of determining if the
components are compatible and altering the order of dispensing when
properly programmed” (answer, page 12). We cannot agree with the
Examiner that his finding is supported by the Lewis disclosure
generally including the column 6 disclosure specifically.
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