Appeal No. 2006-1222 Page 3
Application No. 10/141,442
answer should not refer, either directly or indirectly, to any prior Office action with
out fully restating the point relied on in the answer.”
The examiner’s only statement with regard to the anticipation appears at
page 3 of the Answer and is reproduced in full below:
Appellant is further advised that the courts have sanctioned the
practice of nominally basing rejections on 35 USC 103 when, in
fact, the actual ground of rejection is that the claims are anticipated
by the prior art; justification for the sanction is the lack of novelty,
e.g. as evidenced by a complete disclosure of the invention in the
prior art, is the epitome of obviousness. In re Pearson, 181 USPQ
641. The examiner makes this statement of fact because the
original ground of rejection dated September 30, 2003 was made
over claims 1-50 in their entirety based solely on 35 USC 103 as
being unpatentable over Warner et al. USP 5,525,345 in view of
Luu et al. USP 5,871,763, both cited and supplied by applicant.
Upon reviewing said rejection as well as the arguments presented
by appellant in response to said action, the examiner realized that
claims 1-18, 20-30 and 32-36 were unpatentable and clearly
anticipated solely over Warner et al USP 5,525,345 under 35 USC
102.
What this statement has to do with setting forth the basis of the
anticipation rejection eludes this panel. “Under 35 U.S.C. § 102, every limitation
of a claim must identically appear in a single prior art reference for it to anticipate
the claim.” Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032
(Fed. Cir. 1997). “Every element of the claimed invention must be literally
present, arranged as in the claim.” Richardson v. Suzuki Motor Co., Ltd., 868
F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989).
After we performed a paper chase through this record to identify what
appears to be the basis for the anticipation rejection now before us on appeal, we
find the examiner’s statement at page 3 of the Answer even more baffling. See
the anticipation rejection set forth in at pages 2-3 of the Office Action, mailed
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