Ex Parte Paul et al - Page 3



          Appeal No. 2006-0894                                       Page 3           
          Application No. 10/412,840                                                  

                                       OPINION                                        
               Having carefully considered each of appellants* arguments              
          set forth in the brief, appellants have not persuaded us of                 
          reversible error on the part of the examiner.  Accordingly, we              
          will affirm the examiner’s rejections for substantially the                 
          reasons set forth by the examiner in the answer.  We add the                
          following for emphasis.                                                     
               Appellants furnish seven subheadings (A1-A7) in the brief              
          identifying either single claims or groups of claims as being               
          separately argued.  Consequently, we shall consider the claims              
          separately to the extent that they are separately argued in the             
          brief and select a representative claim for each of the several             
          groups of claims that are argued together.  See 37 CFR                      
          § 41.37(c)(1)(vii).                                                         
                          § 102(b) Alternative of Rejection                           
               Anticipation by a prior art reference does not require that            
          the reference recognize either the inventive concept of the                 
          claimed subject matter or the inherent properties that may be               
          possessed by the prior art reference.  See Verdegaal Bros. Inc.             
          v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed.              
          Cir.), cert. denied, 484 U.S. 827 (1987).  A prior art reference            
          anticipates the subject matter of a claim when the reference                





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