Appeal 2007-0224
Application 09/754,785
The Examiner disagrees. In particular, the Examiner argues that
Appellant is arguing limitations found in the Specification, but not claimed.
The Examiner further argues that Appellant’s Specification fails to set forth
a definition of the recited “components” with “reasonable, clarity,
deliberateness, and precision” that would render the incorporation of such a
definition into the claims appropriate (quoting In re Paulsen, 30 F.3d 1475,
1480, 31 USPQ2d, 1671, 1674 (Fed. Cir. 1994)). Therefore, the Examiner
concludes that the limitations of claim 1 cannot be properly construed to
require the rearrangement of headers, sections, tables, and various other
components to convert a software module for efficient linking and loading
(Answer 4-5).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharm. Corp.,
432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005) (citing
Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992)). Anticipation of
a patent claim requires a finding that the claim at issue “reads on” a prior art
reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51
USPQ2d 1943, 1945 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
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