Appeal No. 2006-0288
Application 10/611,765
claims 1, 10, 13, 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Brownell in view of Buj and Gruneisen (answer, page 5).1,2
We refer to the answer and to the brief for a complete exposition of the positions
advanced by the examiner and appellant.
It is well settled that in order for the examiner to establish a prima facie case of
anticipation, each and every element of the claimed invention, arranged as required by the claim,
must be found in a single prior art reference, either expressly or under the principles of
inherency. See generally, In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.
Cir. 1997); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ 1315,
1317 (Fed. Cir. 1988); Lindemann Maschinenfabrik GMBH v. Am. Hoist and Derrick, 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
It is also well settled that in order to establish a prima facie case of obviousness under
§ 103(a), the examiner must show that some objective teaching, suggestion or motivation in the
applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill
in this art would have led that person to the claimed invention as a whole, including each and
every limitation of the claims arranged as required by the claims, without recourse to the
teachings in appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47
USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); B.F. Goodrich Co. v. Aircraft
Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re Fine,
837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988); In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
1 See the appendix to the brief filed June 9, 2005. Claims 6, 8, 9, 14, 15 and 21 through 23 have
been withdrawn from consideration by the examiner under 37 CFR § 1.142(b). Claims 1 through
23 are all of the claims in the application.
2 Appellant presents arguments respecting the objection to the amendments to the specification
and to the drawings set forth in the final rejection mailed December 8, 2004 (brief, pages 3-4 and
6-9). As the examiner points out (answer, page 3), these matters are petitionable and thus, not
reviewed on appeal. See Manual of Patent Examining Procedure §§ 1002.02(c) and 1201
(8th ed., Rev. 2, May 2004; 8th ed., Rev. 3, August 2005).
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