Appeal No. 2004-2142
Application No. 09/220,736
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
A rejection for anticipation under section 102 requires that
the four corners of a single prior art document describe every
element of the claimed invention, either expressly or inherently,
such that a person of ordinary skill in the art could practice
the invention without undue experimentation. In re Paulsen, 30
F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
The examiner sets forth, at page 4 of the answer, the
correspondence of the claimed elements to elements disclosed in
the Thomson reference. The examiner specifically equates the
claimed “object” with item 10 in Thomson. It is clear from
Thomson, that element 10 depicted therein is a light source and
is most definitely not the object to be scanned. Accordingly,
the examiner’s whole premise about how the elements of Thomson
are alleged to meet the instant claim language is flawed.
Since the examiner has clearly not established a prima facie
case of anticipation, we will not sustain the rejection of claims
1-3 and 7-9 under 35 U.S.C. § 102(b).
Moreover, we also will not sustain the rejection of claims
4-6 and 10-17 under 35 U.S.C. § 103 because we find no reason
-3–
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007