Appeal No. 2005-0971 Page 3
Application No. 10/114,392
Throughout our opinion, we make references to the Appellants’ briefs, and
to the Examiner’s Answer for the respective details thereof.1
OPINION
With full consideration being given to the subject matter on appeal, the
Examiner’s rejections and the arguments of the Appellants and the Examiner, for
the reasons stated infra, we reverse the Examiner’s rejection of claim 66 under
35 U.S.C. § 102; and we reverse the Examiner’s rejection of claims 29-30, 33-38,
40-41, 46-47, 49-50, 52-57, 60-65, and 67-68 under 35 U.S.C. § 103.
I. Whether the Rejection of Claim 66 Under 35 U.S.C. § 102 is
proper?
It is our view, after consideration of the record before us, that the
disclosure of Hays does not fully meet the invention as recited in claim 66.
Accordingly, we reverse.
It is axiomatic that anticipation of a claim under § 102 can be found only if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
With respect to independent claim 66, Appellants argue at pages 11-13 of
the brief, that Hays fails to teach the claimed “deforming the bonding structure
until . . . a deforming condition is applied . . . [where] the deforming condition
[includes at least] . . . a predetermined pressure.” The Examiner counters at
page 15 of the answer, that this limitation is met by Hays’ teaching of using a
“moderate compressive force” to join the cap 36 to the substrate (col. 5, lines 15-
17). We find Appellants’ argument persuasive.
Claim 66 requires that the deforming continue “until” a deforming condition
is met. We find that this limitation clearly requires that the deforming condition be
met before deforming is stopped. We further find that this inherently requires that
the deforming condition be measured so as to determine the meeting of the
deforming condition.
1 Appellants filed an appeal brief on March 2, 2004. The Examiner mailed an
Examiner’s Answer on June 4, 2004.
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