Appeal No. 2005-1273 Page 7
Application No. 10/057,619
REMAND
We remand this application to the examiner to consider if any pending claim is
anticipated3 by the embodiment of Granzow depicted in Figure 7. Specifically, the
examiner should determine, on the record, whether or not the claimed "print media" is
readable on Granzow's print transfer cylinder 122.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 19 and 21 to 44
under 35 U.S.C. § 103 is reversed. In addition, this application has been remanded to
the examiner for further consideration.
2(...continued)
ordinary skill in the art to have modified Yashima to arrive at the claimed subject matter.
3A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is encompassed by the claim and
what subject matter is described by the reference. As set forth by the court in Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim are found in the reference, or
'fully met' by it."
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