Appeal No. 2005-0381 Page 6
Application No. 09/841,380
Based on the above tenets of claim interpretation, we determine that claim 33 is limited
to an apparatus comprising a circulating conductive transfer surface and an electrostatic spray
head, those are the only apparatus elements recited in claim 33. The other language of the claim
limits the claim only insofar as it limits those structures of the apparatus. If the apparatus of
Hess includes a circulating transfer surface and an electrostatic spray head capable of
functioning as claimed, the apparatus of Hess anticipates claim 33.
We find that Figure 3 of Hess, the Figure relied upon by the Examiner, depicts an
apparatus having the apparatus structure required by claim 33 including the capability of
functioning as claimed. Specifically, roll 216 has a circulating transfer surface. Roll 216 is
shown as grounded (Fig. 3) which necessarily conveys that the roll is conductive.3 Moreover,
Figure 3 depicts an electrostatic spray head 218 positioned to apply drops to a target region of
the roll 216. The positioning of the spray head and transfer surface in reference to each other is
analogous to the positioning Appellants depict in their figures and, therefore, we find that the
apparatus of Hess is capable of operating as claimed.
3The word “ground” is being used in Hess in its electrical context wherein the ground serves as a return
point for the electric charges in an electric circuit. Such an electric circuit requires conductive components.
Therefore, the description in Hess of a grounded roll put those of ordinary skill in the art in possession of a
conductive roll. Such possession is adequate for a finding of anticipation. When speaking in terms of anticipation
under the clause “patented or described in a printed publication” in section 102(b), the requirement of an enabling
description is articulated as whether one of ordinary skill in the art is “put in possession of the invention.” In re
LeGrice, 301 F.2d 929, 936, 133 USPQ 365, 372 (CCPA 1962). See also Helifix, 208 F.3d at 1346, 54 USPQ2d at
1303; In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); In re Collins, 462 F.2d 538, 542,
174 USPQ 333, 337 (CCPA 1972); In re Hoeksema, 399 F.2d 269, 273, 158 USPQ 596, 600 (1968).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007