Appeal No. 2007-0464
Application 09/964,874
resets the focus offset value and/or the tracking offset value when the difference is determined to
have exceeded the predetermined level.
E. Principles of law
To establish anticipation under 35 U.S.C. § 102, each and every element in a claim,
arranged as is recited in the claim, must be found in a single prior art reference. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001).
Anticipation can be found when a claim limitation is inherent or otherwise implicit in the
relevant reference. Standard Havens Products, Inc. v. Gencor Industries, Inc., 953 F.2d 1360,
1369, 21 USPQ2d 1321, 1328 (Fed. Cir. 1991). But for establishing inherency, that which is
missing in the express description must necessarily be present and would be so recognized by
one with ordinary skill in the art. Continental Can Co. USA Inc. v. Monsanto Co., 948 F.2d
1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). Inherency may not be established by
probabilities or possibilities, and the mere fact that a certain thing may result from a given set of
circumstance is not sufficient. In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA
1981). In proceedings before the U.S. Patent and Trademark office, claims are properly
construed according to their broadest reasonable interpretation consistent with the specification.
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); Ex Parte Prater, 415
F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA 1969).
F. Analysis
The Anticipation Rejection of Claim 24 over Otsuka
With regard to claim 24, the only claim features argued by the applicant as not shown by
the examiner as disclosed by Otsuka are two: (1) the setting of a focus offset value and/or
tracking offset value at startup of the optical disk drive, and (2) subsequent resetting of the focus
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