Appeal No. 2006-0313
Application 10/300,276
The examiner has rejected appealed claims 1 through 30 under 35 U.S.C. § 102(e) (2002)
as anticipated by Dubin (answer, page 4).
The examiner also set forth the ground of rejection of claims 1 through 4, 9, 11 through
14 and 19 under 35 U.S.C. § 102(b) as anticipated by Malik et al. (Malik) (answer, page 3), but
then withdrew the rejection (id., page 5). We have considered this matter below (see below pp.
9-10).
Appellants do not present argument with respect to a claim or group of claims with
respect to the ground of rejection advanced on appeal. Thus, we decide this appeal based on
appealed claim 1. 37 CFR § 41.37(c)(1)(vii) (September 2004).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer and to the brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported finding advanced by the examiner that as a matter of fact, prima
facie, appealed claim 1 is anticipated by Dubin. Accordingly, since a prima facie case of
anticipation has been established by the examiner, we again evaluate all of the evidence of
anticipation and non-anticipation based on the record as a whole, giving due consideration to the
weight of appellants’ arguments in the brief. See generally, In re Spada, 911 F.2d 705, 707 n.3,
15 USPQ2d 1655, 1657 n.3. (Fed. Cir. 1990).
In order to review the examiner’s application of Dubin to appealed claim 1, we first
interpret the claim by giving the terms thereof the broadest reasonable interpretation in their
ordinary usage in context as they would be understood by one of ordinary skill in the art in light
of the written description in the specification unless another meaning is intended by appellants as
established in the written description of the specification, and without reading into the claims
any limitation or particular embodiment disclosed in the specification. See, e.g., In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); In re Morris,
127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
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