Appeal No. 2004-2195
Application No. 09/394,189
35 U.S.C. § 102
"Anticipation is established only when a single prior art reference discloses,
expressly or under principles of inherency, each and every element of a claimed
invention." RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). In other words, "[t]here must be no difference
between the claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention." Scripps Clinic & Research Found. v.
Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
limitations set forth in independent claim 27. Here, the language of independent claim
27 recites “performing a finite element analysis on the design of a patch antenna to
determine an estimated output impedance.” Appellants argue that Erturk does not
disclose or inherently teach the step of performing a finite element analysis to determine
impedance. (See brief at page 4.) The examiner maintains that Erturk teaches
performing a finite element analysis at page 1 [sic, 1322], lines 25-29. (See answer at
page 4.) We disagree with the examiner and find no such teaching of the use of finite
element analysis. Furthermore, we find no discussion by the examiner as to why it
would have been inherent that the disclosed/recited models necessarily use finite
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