Appeal 2007-0469
Application 10/299,618
Appellant. Arguments which Appellant could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).
OPINION
It is our view, after consideration of the record before us, that the
disclosure of Hicks fully meets the invention set forth in claims 1-6, 8, 12,
15-19, 21, 23, 26, and 28-30. We also conclude that the evidence relied
upon and the level of skill in the particular art would have suggested to one
of ordinary skill in the art the invention set forth in claims 7, 9-11, 13, 14,
20, 22, 24, 25, 27, 31, and 32. Accordingly, we affirm. In addition, we
enter new grounds of rejection under 37 C.F.R. § 41.50(b) for claims 18-22,
24, and 25 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 1-6, 8, 12, 15-19,
21, 23, 26, and 28-30 under 35 U.S.C. § 102(b) as being anticipated by
Hicks. 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 Hicks (Answer 4-8). Appellant argues that
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