Appeal No. 2005-2244 Page 4
Application No. 10/157,386
It is axiomatic that anticipation of a claim under § 102 can be found only if
the prior art reference discloses every element of the claim. See In re King, 801
F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
With respect to independent claim 1, Appellants argue at pages 6-7 of the
brief, that the evidence does not show that the matter that is alleged by the
Examiner to be inherent in Luse would be necessarily present in Luse. The
Examiner responds at pages 3-8 of the answer that there necessarily must be an
indication (A), a signal from a processor (B), and a clock signal (C) from the bus.
Further, all must be input to logic that generates a control signal (D). We agree
with the examiners reasoning that such would necessarily be present in Luse.
However, we do not agree with the Examiner that the remaining limitations
of the last three lines of claim 1 are necessarily present in Luse. There is nothing
in Luse that necessitates that the logic be comprised of first and second logic
with the input/output relationships as in claim 1. Rather, Luse could equally be
implemented with a single logic that receives (A), (B), and (C), and then outputs
(D). Further, there is nothing in Luse that necessitates that the logic be
comprised within rather than outside the first device. These distinctions may
seem trivial given that they seem obvious in the extreme. However, they are in
fact critical given that the Luse reference is not available as prior art under
35 U.S.C. § 103.
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