Appeal No. 2005-1216
Application No. 10/117,453
1997, based on their U.S. Provisional Patent Application No. 60/050,840. Id. The
appellants still further argue that Hillenkamp II is not entitled to the September 19, 1996
filing date of Hillenkamp I because, Figures 10-12B, on which the examiner relies, were
canceled from Hillenkamp I. Id. In addition, the appellants point out that there is no
description of said figures in Hillenkamp I. Id., p. 7.
In return, the examiner points out that Hillenkamp I discloses a sample holder
“having a plurality of thin needle like projections (islands of sample support surfaces
with recessed areas between adjacent samples/pins) . . . onto which the sample 2 is
coated.” Answer, p. 11. The examiner contends that such teachings in Hillenkamp I
anticipated the claimed invention. Id.
It is well established that anticipation requires that each and every limitation set
forth in a claim be present, either expressly or inherently, in a single prior art reference.
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir. 1999); Celeritas
Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360, 47 USPQ2d 1516, 1522 (Fed.
Cir. 1998); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051,
1053 (Fed. Cir. 1987); Lindemann Maschinenfabrik GMBH v. American Hoist and
Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
While we agree with the examiner that Hillenkamp I and II anticipate (§ 102(e))
the invention recited in claims 30, 31, 36 and 37, we do so for very different reasons. In
addition, we find that the patents anticipate claims 38-41 and would have rendered the
subject matter of claims 34 and 35 obvious to one of ordinary skill in the art. Under
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