Appeal No. 2006-1325
Application No. 10/163,610
1 Anticipation is established only when a single prior art reference
2 discloses, expressly or under the principles of inherency, each and every
3 element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
4 Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
5 Kelley refers to “dividing a room” (Abstract) and to an “office
6 environment” having work stations according to Kelley’s invention (col. 5,
7 ll. 19-20) but does not specify that the office environment is any of a hotel
8 room, resort, hospital, apartment building or residential structure. Kelley
9 thus does not disclose a method of modifying a hotel room, resort, hospital,
10 apartment building or residential structure, as called for in claims 32-34 and,
11 therefore, does not anticipate claims 32-34. The anticipation rejection
12 cannot be sustained as to these claims.
13 This application is remanded, pursuant to 37 CFR § 41.50(a)(1), for
14 the Examiner to consider whether claims 32-34 should be rejected under
15 35 U.S.C. § 103(a) as being unpatentable over Kelley. In other words, in
16 response to the remand, the Examiner should consider whether Kelley would
17 have suggested to one of ordinary skill in the art installing the work
18 management system of Kelley in any of the locations referred to in the
19 preamble of claim 32.
20 We turn next to the rejection of claims 7, 8, 19, 25, and 35 as being
21 unpatentable over Kelley in view of Swensson. The Examiner contends that
22 the combined teachings of Kelley and Swensson would have suggested
23 modifying Kelley “by using integrally molded components in order to
12
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013