Appeal No. 2006-2187
Application No. 10/642,413
meaning, particularly to those skilled in the art at the relevant time. See
Studiengesellschaft Kohle v. Dart Indus., Inc., 726 F.2d 724, 726-727, 220
USPQ 841, 842-843 (Fed. Cir. 1984).
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).
From our review of the Examiner’s rejection in the Answer, we
cannot agree with the Examiner’s formulation of the rejection based upon
anticipation over the Tan reference. We agree with Appellant that Tan does
not teach that covering 12 is “formed over” housing 16 with outer surface 29
being the raised portion with both design and background surfaces which are
not level. We find the Examiner’s correlation to be unclear and
unreasonable in light of Appellant’s disclosed invention. Therefore, we
cannot sustain the rejection of claims 1 and 12 based upon Tan alone.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A
prima facie case of obviousness is established by presenting evidence that
the reference teachings would appear to be sufficient for one of ordinary
skill in the relevant art having the references before him to make the
proposed combination or other modification. See In re Lintner, 458 F.2d
5
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