Appeal No. 2006-2396
Application No. 10/293,133
We consider first the rejection of claims 1-5, 8-10, 14, and 16-23 as being
anticipated by Roy. Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every element of a
claimed invention as well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital Data Systems, Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984); W.L. Gore and Associates, Inc. v.
Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983).
The examiner has indicated how the invention of these claims is deemed to be fully
met by the disclosure of Roy [answer, pages 3-5]. With respect to claims 1, 9, and 10,
which are argued together by appellants, appellants argue that Roy fails to disclose the
claim limitation of the acoustic array being controllably positioned by the fluid
distribution stack to form a predetermined gap with the front membrane. Specifically,
appellants argue that Roy fails to disclose the ability to control positioning of the fluid
distribution stack. Appellants also argue that the support surface of the protrusion in Roy
is different than a datum surface [brief, pages 5-7]. The examiner responds that the
datum surface disclosed by appellants that controllably positions the acoustic array in
appellants’ invention is no different from the protrusion 94 disclosed by Roy. Thus, the
examiner asserts that Roy controllably positions the acoustic array in the same manner as
disclosed for appellants’ invention. The examiner also notes that appellants’ argument
with respect to a datum surface is not persuasive because this limitation is not provided in
the claims [answer, pages 6-7]. Appellants respond that the support surface 94 of the
protrusion in Roy is not controllably positioning the acoustic array as called for in claim
1 [reply brief, page 2].
We will sustain the examiner’s rejection of claims 1, 9, and 10 for essentially the
reasons argued by the examiner in the answer. We agree with the examiner that the
acoustic array of appellants’ disclosed invention is no more “controllable” than the
acoustic array disclosed by Roy. Appellants have pointed to Figure 8A of the
application, but we find nothing in this figure that supports a concept of being
“controllable” that differs from the positioning taught by Roy. With respect to the
argument regarding a datum surface, we again agree with the examiner that this argument
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