Appeal No. 2005-1216
Application No. 10/117,453
the claimed invention. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). This the examiner has not done.
Moreover, contrary to the examiner’s arguments, we find that, inter alia, Fodor
anticipates the invention recited in claims 30-33, 36 and 38-41. Accordingly, we vacate
the examiner’s rejection and set forth our own pursuant to 37 C.F.R. § 41.50(b). See
our discussion, infra.
VI. New grounds of rejection
Pursuant to 37 C.F.R. § 41.50(b), we set forth the following new grounds of
rejection.
A. Claims 30, 31 and 36-41 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Hillenkamp I and Hillenkamp II.
As discussed above, 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 at 745, 49 USPQ2d at 1950; Celeritas Techs. Ltd. v. Rockwell Int’l
Corp., 150 F.3d at 1360, 47 USPQ2d at 1522; Verdegaal Bros., Inc. v. Union Oil Co.,
814 F.2d at 631, 2 USPQ2d at 1053; Lindemann Maschinenfabrik GMBH v. American
Hoist and Derrick Co., 730 F.2d at 1458, 221 USPQ at 485.
Turning first to claim 30, we find that the claim is directed to a sample holder
comprising a multiplicity of islands which are non-removably connected to one another
through a substrate. The islands comprise sample support surfaces which are
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