Appeal No. 2005-1708 Page 4
Application No. 10/370,122
not anticipated1 by Niaura. The rejection of claim 1, as well as claims 3-5, which
depend from claim 1, as being anticipated by Niaura is not sustained.
As explained above, Niaura lacks a fixing component comprising a base, stem
and fork which are made as a single piece. We find no suggestion in Niaura, and the
examiner has pointed to no such suggestion, to form the hollow cylindrical portion 9 and
U-shaped strap 10 connected thereto as a single piece so as to arrive at the invention
recited in independent claim 1. It thus follows that the rejection of claims 6-8, which
depend from claim 1, cannot be sustained.
Finally, we turn our attention to the rejection of claim 2 as being unpatentable
over Niaura in view of Finn.2 Finn evidences that it was well known in the art at the time
of appellants’ invention to form a yoke-shaped element for connecting the sleeve 24 of a
hydraulic damper in a vehicle suspension with one of the masses (the drive axle) of the
vehicle as a single element by forging, the element comprising legs 28, 30 and an
integral tubular portion accepting the sleeve 24. In light of the teachings of Finn, it
would have been obvious to one of ordinary skill in the art to form the cylindrical portion
1 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. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be
no difference between the claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576, 18 USPQ2d 1896, 1010 (Fed. Cir. 1991).
2 On page 6 of the answer, the examiner also referred to Breese (US Pat. No. 5,611,135, issued
March 18, 1977), but this reference has been given no consideration since it was not positively included in
the rejection. Ex parte Raske, 28 USPQ2d 1304, 1305 (Bd. Pat. App. & Int. 1993). Where a reference is
relied on to support a rejection, whether or not in a "minor capacity," there would appear to be no excuse
for not positively including the reference in the statement of rejection. In re Hoch, 428 F.2d 1341, 1342
n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
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