Appeal No. 2004-2286
Application 09/960,193
Habermehl in place of the slot drive socket in the head of the screw of Wilson as required by
appealed claim 4, in the reasonable expectation of successfully driving the screw into material
with square drive mechanism drivers (Paper No. 5, page 2; answer, pages 6-7).
Accordingly, since the examiner has established a prima facie case of anticipation over
Wilson, and a prima facie case of obviousness over the combined teachings of Wilson and
Habermehl, we have again evaluated all of the evidence of anticipation and non-anticipation and
all of the evidence of obviousness and nonobviousness based on the record as a whole, giving
due consideration to the weight of appellant’s arguments in the brief. See generally, In re Spada,
911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3 (Fed. Cir. 1990); In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984).
We have again read the double pitch screw disclosed in cols. 1 and 2 of page 1 and, e.g.,
Figs. 1 and 4 of Wilson on all of the limitations of the “double pitch screw” set forth in appealed
claim 1 and thus, agree with the examiner’s findings that the so disclosed screw satisfies all of
the limitations of appealed claim 5 (answer, page 5), because limitations “(a)” through “(i)” of
claim 1 correspond to limitations “(c)” through “(k)” of claim 5. Thus, Wilson in fact expressly
describes a double pitch screw that meets each and every element arranged as required by
appealed claim 1, placing the claimed screw in the possession of a person of ordinary skill in the
art, which is all that is required to establish anticipation within the meaning of § 102(b). See
generally, In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Based on this substantial evidence in Wilson, we cannot agree with appellant’s
arguments that “the Wilson structure is substantially different” because the double pitch screw of
the reference is “tapered” and the pitch of the two sets of threads is reversed (brief, pages 6-8).
Indeed, as the examiner points out (answer, page 6), there is no claim limitation with respect to
the “taper” of the claimed screw, and the allegation that “[a]ppellant is showing a substantially
straight, untapered barrel” (brief, page 8), apparently based on the specification figures, will not
be read into the appealed claims as a limitation because there is no basis in the written
description, including the drawings, of the specification or in the claim language to do so. See
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); In re Priest, 582 F.2d 33, 37, 199
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