Appeal No. 2004-0779
Application No. 09/790,185 Page 5
briefs along with the examiner's rationale in support of the
rejections and arguments in rebuttal set forth in the examiner's
answer.
Upon consideration of the record before us, we reverse,
essentially for the reasons set forth by appellants, and add a
New Ground of Rejection of claims 1-5 and 7 under 37 CFR
§ 41.50(b). We begin with the rejection of claims 1 and 7 under
35 U.S.C. § 102(b) as being anticipated by Oshima ('299).
To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997). As stated in In re Oelrich, 666
F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939))
(internal citations omitted):
Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.
If, however, the disclosure is sufficient to show that the
natural result flowing from the operation as taught would
result in the performance of the questioned function, it
seems to be well settled that the disclosure should be
regarded as sufficient.
Appellants assert (brief, page 15) that the examiner's rejection
does not specifically state why the oblong stripes/marks satisfy
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