Appeal No. 2006-1589
Application No. 10/082,912
The Court of Appeals for the Federal Circuit has determined that the absence of a
disclosure relating to function does not defeat a finding of anticipation if all the claimed
structural limitations are found in the reference. In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997). In Schreiber, the court held that a funnel-shaped oil
dispenser spout anticipated a claimed conical-shaped popcorn dispensing top, even though the
function of popcorn dispensing was not taught by the reference, because the reference met all the
structural limitations of the claim. In re Schreiber, 128 F.3d at 1479, 44 USPQ2d 1429 at 1433.
Assuming, arguendo, as appellants assert, that because Kiel does not teach a system that
is onboard a mobile vehicle that Kiel cannot anticipate the claimed “onboard system,” we note
that the state of being onboard a mobile vehicle is merely an intended use or function for Kiel’s
portable handheld communication device (i.e., “system”) [claim 1, emphasis added].
Significantly, we note that the structure of Kiel’s portable handheld communication
device does not change according to its particular location (i.e., whether the communication
device is onboard a vehicle or not) [emphasis added]. Accordingly, because the absence of a
disclosure relating to an intended use or function does not defeat a finding of anticipation, we
will sustain the examiner’s anticipation rejection for essentially the same reasons argued by the
examiner [emphasis added].
For at least the reasons discussed supra, we will sustain the examiner’s rejection of all
the claims in Group I (claims 1, 5, and 9).
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