Appeal 2006-2721
Application 09/579,938
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of anticipation found in DeVito
and in Briggs with Appellant’s countervailing evidence of and argument for
non-anticipation and conclude that the claimed invention encompassed by
appealed claim 3 would have been anticipated as a matter of fact under
35 U.S.C. § 102(b).
With respect to the grounds of rejection under § 102(b) over Corbin,
the Examiner has established that prima facie, each and every element of the
claimed apparatus encompassed by claim 34, arranged as required by the
claim, is expressly found in the reference. See, e.g., Schreiber, 128 F.3d at
1477, 44 USPQ2d at 1431. We are not convinced otherwise by Appellant’s
contention because, as the Examiner finds, Corbin describes an apparatus
meeting all of the claim limitations including having “storage reservoirs” for
“paint” with dispensing mechanisms for the paint coupled to the storage
compartments. We note the language indicating the presence of “one or
more colors of paint” in claim 34 is a recitation of a material element on
which the apparatus works and does not form part of the apparatus. See
generally, In re Otto, 312 F.2d 937, 939-40, 136 USPQ 458, 459-60 (CCPA
1963); In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935); In re Rishoi,
197 F.2d 342, 344-45, 9 USPQ 71, 72-73 (CCPA 1935); cf. Ex parte
Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of anticipation found in Corbin
with Appellant’s countervailing evidence of and argument for non-
anticipation and conclude that the claimed invention encompassed by
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