Appeal No. 2006-2118 Page 6
Application No. 10/022,754
Anticipation of a patent claim requires a finding that the claim at issue
“reads on” a prior art reference. Titanium Metals Corp. v. Banner, 778 F.2d 775,
781, 227 USPQ 773, 778 (Fed. Cir. 1985) (“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.”). In the instant case, we agree
with the examiner that the claimed “stylus input system” broadly reads upon
Grover’s explicit disclosure of “any pointing device such as a mouse or a light
pen” [col. 9, lines 22 and 23]. We note that the examiner need only show one of
the recited elements (i.e., “a speech recognition input system, a handwriting
input system, or a stylus input system”) to meet the alternative language of the
claim.
We further note that appellant has failed to point out the specific
distinctions believed to render this portion of the claim patentable over the
applied reference, as required by 37 C.F.R. §1.111(b). A general allegation that
the claims define a patentable invention without specifically pointing out how the
language of the claims patentably distinguishes them from the references does
not comply with the requirements of §1.111(b). In particular, we note that
appellant has failed to point out how the claimed “stylus input system”
distinguishes over the light pen disclosed by Grover [col. 9, lines 22 and 23].
We recognize that Grover’s disclosure of “any pointing device” (i.e., the
genus of all pointing devices) does not necessarily anticipate a “stylus” (i.e., a
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