Appeal No. 2005-0778
Application No. 09/867,587
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 Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984);
W.L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
We consider first the examiner's 35 U.S.C. § 102 rejection of claim 34 based
upon the teachings of Hogan alone. From our review of the examiner’s answer and the
teachings of Hogan, we find that the examiner has established a prima facie case of
anticipation of the recited three steps. Therefore, we look to appellants’ briefs to rebut
or show error therein.
The three recited steps require “transmitting a notice according to an e-mail
protocol, via a network, indicating availability of billing information; transmitting a
request according to a protocol other than an e-mail protocol, via the network, to
receive the billing information responsive to receipt of the notice; and transmitting at
least a portion of the billing information, via the network responsive to receipt of the
request.” Appellants seem to paraphrase the examiner’s position with respect to
independent claim 34 correctly at pages 11-13 of the brief, but appellants argue that
even if the examiner’s analysis of Hogan is correct, the content of the e-mail with
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