Appeal No. 2007-0379 Page 11
Application No. 10/045,301
requirements of appellant’s claimed invention. For example, while the
examiner asserts that the kiosk is the cabinet, the examiner also asserts
that the “remote dispenser has a separate cabinet.” Answer, page 5. In
this regard, the examiner asserts that “the kiosk is depicted as having
separate compartments . . . [e.g.,] the icemaker with separate cabinet . . .
and the ice bin (another separate cabinet) . . . .” As we understand the
examiner’s argument the host systems (e.g., water dispenser and ice
maker) are separate cabinets within a common cabinet – the kiosk. This,
however, is not what appellant has claimed. As appellant explains (Brief,
page 7), “[i]f the kiosk is a common cabinet, then there can be no separate
unit; and, if the kiosk is not a common cabinet, then there can be no
integrated water treatment system and water-using unit.” We agree.
In our opinion, the examiner failed to provide the evidence
necessary to establish that appellant’s claimed invention is anticipated3 or
obvious4 in view of Boulter. At best, the examiner attempts to selectively
define different components of Boulter’s structure to conform them into
what appellant has claimed. In our opinion this is nothing more than a
hindsight reconstruction5 of appellant’s claimed invention. Accordingly, we
3 “Under 35 U.S.C. § 102, every limitation of a claim must identically appear in a single prior art
reference for it to anticipate the claim.” Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d
1030, 1032 (Fed. Cir. 1997).
4 “A prima facie case of obviousness is established when the teachings from the prior art itself
would appear to have suggested the claimed subject matter to a person of ordinary skill in the
art.” In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
5 In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) (“Combining prior
art references without evidence of such a suggestion, teaching, or motivation simply takes the
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