Appeal 2006-1593
Application 09/737,413
in that Badesha ‘643 alone furnishes sufficient evidence to render the
representative claim 20 subject matter prima facie unpatentable. After all, a
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the epitome of
obviousness." Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025
(Fed. Cir. 1984). See also In re Fracalossi, 681 F.2d 792, 794, 215 USPQ
569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ
641, 644 (CCPA 1974).
The thrust of Appellants’ arguments, as they apply to the
representative claim 20, appears to be based on the notion that the
appellation “transfix member” as employed in the preamble of representative
claim 20 necessarily requires a distinct structure from that disclosed by
Badesha ‘643.1 In this regard, Appellants seemingly maintain that a transfix
member must be capable of performing transferring and fixing functions
whereas Badesha ‘643 does not explicitly disclose that the denoted fuser
device disclosed therein is capable of performing a transferring function in
addition to the fixing (fusing) functions performed by a fuser. However,
even if we could agree with Appellants that the name “transfix member”
necessarily implies another functionality for the claimed device in addition
to a fixing (fusing) function, Appellants have not fairly established that the
substantially identical structure of the fuser of Badesha ‘643 would not be
capable of performing the additional transfer functions of a transfix device.
1 As we noted above, Appellants have brought this appeal on the basis of all
of the appealed claims standing or falling together. Thus, we will not
belabor the record with a discussion of the additional teachings of Swift or
Badesha ‘504 as applied by the Examiner in combination with Badesha ‘643
to establish the obviousness of the other appealed claims.
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