Appeal 2007-0345
Application 09/812,417
OPINION
It is our view, after consideration of the record before us, that the
disclosure of Lawler fully meets the invention set forth in the claims on
appeal. We also enter new grounds of rejection under 37 C.F.R.
§ 41.50(b) for claims 1-4, 6-8, and 23-28 as failing to recite statutory subject
matter under 35 U.S.C. § 101.
The Anticipation Rejection
We first consider the Examiner’s rejection of claims 1-28 under 35
U.S.C. § 102(b) as being anticipated by Lawler. Anticipation is established
only when a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing the recited
functional limitations. RCA Corp. v. Applied Digital Data Systems, Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313
(Fed. Cir. 1983).
The Examiner has indicated how the claimed invention is deemed to
be fully met by the disclosure of Lawler (Answer 3-5). Regarding
independent claims 1, 9, 17, and 23, Appellants argue, among other things,
that Lawler’s various program option buttons merely cause the option to be
performed; the user, however, is not given the opportunity to accept or
modify the action as claimed (Br. 6). Appellants also argue that Lawler does
not disclose an indicator to indicate the selected future program action as
claimed (Id.). The Examiner argues that Lawler’s icon function indicates
whether a future program action will occur (Answer 6-7).
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