Appeal No. 2006-1095 Page 8
Application No. 10/280,188
claim at issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO,
Inc., 190 F.3d 1342, 1346, 51 USPQ2d 1943, 1945 (Fed Cir. 1999) (“In
other words, if granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art, then that
claim is anticipated, regardless of whether it also covers subject matter not
in the prior art.”) (internal citations omitted). In the instant case, we agree
with the examiner that the language of representative claim 1 reads upon
the Boiarski reference in the manner argued by the examiner. After
carefully reviewing all of the evidence before us, we find that the examiner,
as finder of fact, has set forth a proper prima facie case of anticipation that
is fully supported by the evidence of record, as discussed infra.
Instead of rebutting the examiner’s position by clearly pointing out the
distinctions of the claimed invention over the prior art, we note that
appellants merely assert that “it would be clear to one of ordinary skill in the
art what is meant by a propagation mode” and point to the instant
specification (at fig. 4 and page 10) where two propagation modes are
disclosed that differ only as to phase such that the “two modes allow for
complete destructive and constructive interference between the two modes”
[instant specification, page 10; see also brief, page 3, ¶1]. We note that
Boiarski explicitly discloses constructive interference and destructive
interference as the result of relative phase differences [col. 5, lines 60-66].
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