Appeal No. 2006-3134
Application No. 10/157,603
We must point out, however, that anticipation under 35 U.S.C. § 102 is
established only when a single prior art reference discloses, either expressly or under the
principles of inherency, each and every element of a claimed invention. See RCA Corp.
v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984).
With respect to independent claim 1, Appellants argue that “Sahota does not teach
or suggest receiving a document and processing instructions associated with that
document from the same device” (Br. 6). [Emphasis added.]
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. “[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the limitations as
recited in independent claim 1. We agree with Appellants that the claimed invention
requires that the same “device” that sends the electronic document must also be the same
device that sends the processing instructions which are associated with the electronic
document and contain information regarding how to process the electronic document.
At the outset, we note that it is quite difficult to follow the Examiner’s rejection
since the Examiner mentions many devices, sources of content and devices which process
or reformat content for each element and then merely states “compare to. . . .” This is not
sufficient to clearly set forth the Examiner’s position. If we cannot understand the
Examiner’s correlation as to what teachings of Sahota teach each of the separate claimed
elements of the instant claim, then how can we expect Appellants to understand and
provide effective prosecution of the instant application? Additionally, we find that the
Examiner does not respond to Appellants’ arguments, but merely cuts and pastes the
same language from the rejection. If the Examiner’s position was not clear the first time,
it does not clarify the record by merely restating the same language without rephrasing or
clarification. A large problem seems to be that the Examiner seems to find various
similar steps within the system of Sahota and then tries to piece them together to reject
the claims. This is not sufficient to establish a prima facie case of anticipation (or
obviousness).
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