Ex Parte Fichtner et al - Page 4




               Appeal No.  2006-2534                                                                                                  
               Application No.  10/789,411                                                                                            


               meet the claimed plate since the inner radial side of the washer extends radially inward to an area                    
               of the shaft to contact the shaft (answer, page 7).                                                                    
                       A rejection for anticipation under section 102 requires that the four corners of a single                      
               prior art document describe every element of the claimed invention, either expressly or                                
               inherently, such that a person of ordinary skill in the art could practice the invention without                       
               undue experimentation.  See Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d                             
               1943, 1947 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.                          
               Cir. 1994).  The inquiry as to whether a reference anticipates a claim must focus on what subject                      
               matter is encompassed by the claim and what subject matter is described by the reference.  As set                      
               forth by the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789                             
               (Fed. Cir. 1983), it is only necessary for the claims to “read on” something disclosed in the prior                    
               art reference, i.e., all limitations of the claim are found in the reference, or “fully met” by it.  See               
               also Atlas Powder Co. v. IRECO Inc., 190 F.3d at 1346, 51 USPQ2d at 1945 (Fed. Cir. 1999)                              
               (quoting Titanium Metals Corp. v. Banner, 778 F.2d 775, 781, 227 USPQ 773, 778 (Fed. Cir.                              
               1985)).                                                                                                                
                       In determining the subject matter encompassed by claim 1, we agree with the Examiner                           
               that the claim merely requires that the rotor core be formed of a plurality of stacked laminations                     
               without excluding other layers or material as part of the rotor core.  In that regard, as                              
               acknowledged by Appellants (brief, page 4), the washers of Carlson are attached to the end                             
               surfaces of the rotor core through fiber discs 12, which are indeed a part of the rotor core                           

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