Appeal No. 2004-2036 2
Application No. 09/885,264
We turn first to appellant’s request for rehearing of our decision sustaining the
rejection of claim 1 as being unpatentable over Rius. The basis of appellant’s request
for rehearing appears to be that this panel overlooked or misapprehended the argument
on page 10 of appellant’s brief, which alluded to distinctions between Rius and
appellant’s invention, the “Water-Wipe” (W-W) system, pointed out by appellant in an
earlier communication, a copy of which was appended as page 33 of appellant’s brief.
This, however, is not the case. As pointed out on pages 3-4 of our decision, these
alleged distinctions are not directed to limitations recited in appellant’s claim 1 and thus
are not relevant to the issue of the patentability of claim 1 over Rius.
With particular regard to appellant’s reference to the “novelty of W-W’s design”
and the “[s]implified new and useful structure,” of appellant’s invention, it is the subject
matter of appellant’s claims which is relevant in determinations of anticipation and
obviousness. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998), “the name of the game is the claim.”
Thus, while there may in fact be unobvious differences between the invention disclosed
by appellant and the disclosure of Rius, those differences have not been set forth in
claim 1. It is well established that only those features recited in appellant’s claims can
be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5
(CCPA 1982).
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