Appeal No. 2004-1959
Application No. 09/465,465
We consider first the Examiner’s 35 U.S.C. § 102(e)
rejection of claim 1, the representative claim for Appellants’
first suggested grouping (including claims 1-3, 7, 9-13, and 15-
17), based on Gerace. At the outset, we note that anticipation
is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure
which is capable of performing the recited functional
limitations. RCA Corp. v. Applied Digital Data Sys., Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed,
468 U.S. 1228 (1984); W.L. Gore & Assocs. v. Garlock, Inc.,
721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
With respect to representative claim 1, the Examiner
indicates (Answer, pages 3 and 4) how the various limitations are
read on the disclosure of Gerace. In particular, the Examiner
directs attention to the illustrations in Figures 1 and 2 of
Gerace along with the accompanying description beginning at
column 3, line 39 of Gerace.
After reviewing the Examiner’s analysis, it is our opinion
that the stated position is sufficiently reasonable that we find
that the Examiner has at least satisfied the burden of presenting
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