Appeal No. 2006-3283 Page 4
Application No. 10/606,897
Com'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997) and RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984)); however, the law of anticipation does not require that the reference teach what
the appellants are claiming, but only that the claims on appeal "read on" something
disclosed in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218
USPQ 781, 789 (Fed. Cir. 1983).
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). Here, we find that Taraki does not teach all of the limitations as recited in
independent claim 21.
Appellants argue that Taraki fails to measure any parameter between two
different waveforms and that all of the measurements are based upon an
individual waveform (Brief p. 4). Appellants maintains that Taraki fails to
disclose a parameter defining a relationship between the icon and first and second
waveforms and that the icons in Taraki relate to display modes rather than to a
measurement to be performed (Brief p. 5 and Reply Brief pp. 4-5). We agree with
Appellants and further find that Taraki does not disclose “performing a
measurement based on the selected icon, the first point on the first waveform, and
the second point on the second waveform,” as recited in independent claim 21.
Therefore, we will not sustain the rejections of independent claim 21 and
dependent claims 22-24, 26, and 27.
With respect to independent claim 28, we agree with Appellants and further
find that Taraki does not disclose “means for measuring a parameter based on the
selected icon, the first point, and the second point” as recited in independent claim
28. (Brief p. 7 and Reply Brief p. 6). Therefore, we will not sustain the rejections
of independent claim 28 and dependent claims 29-33 and 35.
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