Appeal No. 2005-0659
Application 09/799,134
arranged as required by the appealed claims, either expressly or under the principles of
inherency, in a manner sufficient to have placed a person of ordinary skill in the art in possession
thereof within the meaning of § 102(e). See generally, In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997); Diversitech Corp. v. Century Steps, Inc., 850 F.2d
675, 677-78, 7 USPQ 1315, 1317 (Fed. Cir. 1988); Lindemann Maschinenfabrik GMBH v.
American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
Furthermore, we find no teachings in any of the other applied references which cure this
difference between the claimed invention encompassed by the appealed claims as represented by
appealed claim 1 and the teaching of Shakespeare, and the examiner has not pointed to such
teachings in those references. Thus, the applied references do not provide a factual foundation
establishing that, prima facie, some objective teaching, suggestion or motivation in the applied
prior art taken as a whole and/or knowledge generally available to one of ordinary skill in this art
would have led that person to the claimed invention as a whole, including each and every
limitation of the claims arranged as required by the claims, without recourse to the teachings in
appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453,
1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d
1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531 (Fed. Cir. 1988).
Accordingly, in the absence of a prima facie case of anticipation and of obviousness, we
reverse the grounds of rejection advanced on appeal.
The decision of the examiner is reversed.
Remand
Pursuant to our authority under 37 CFR § 41.50(a)(1),4 we remand this application to the
examiner to consider whether certain disclosure in the written description in appellants’
specification constitutes an admission of the state of the art. This disclosure appears to
4 Effective September 13, 2003; 69 Fed. Reg. 49960 (August 12, 2004); 1286 Off. Gaz. Pat.
Office 21 (September 7, 2004). This remand is not for the purpose of further consideration of a
rejection advanced on appeal, and accordingly, the provisions of 37 CFR § 41.50(a)(2) do not
apply.
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