Ex Parte Anderson et al - Page 5

                Appeal 2007-0487                                                                                 
                Application 09/759,993                                                                           
                       Appellants have not specifically argued that each of the applied                          
                references do not have structure corresponding to the representative claim 22                    
                requirements for a winding roll attached to a frame with the winding roll                        
                including a longitudinal axis as well as a support roll rotatably attached to                    
                the frame and located a fixed distance from the winding roll.                                    
                       Thus, the principal issue raised in this appeal by the opposing                           
                positions of the Examiner and Appellants is:  Have Appellants identified                         
                reversible error in the Examiner’s anticipation rejection by counsel’s                           
                assertions that the film removal structure of Apollonio or the tape removal                      
                apparatus of Kuroda do not describe structure, including an arrangement of                       
                the support roll and winding roll of each of these references on framework                       
                such that the apparatus of each reference would be expected to have the                          
                capability of functioning with the application of force in a manner as set                       
                forth in the wherein clause of representative 22; that is, such that the applied                 
                prior art apparatus would not have been capable of transferring (applying or                     
                distributing) any tension applied to the adhesive film during the removal                        
                thereof to the substrate via a support roll?                                                     
                       We answer this question in the negative and affirm the Examiner’s                         
                separate anticipation rejections over Apollonio or Kuroda for the reasons                        
                stated herein and in the answer.                                                                 
                       The factual determination of anticipation requires the disclosure in a                    
                single reference of every element of the claimed invention, either explicitly                    
                or inherently.  See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,                        
                1431 (Fed. Cir. 1997).  It is also well-settled that an Examiner may shift the                   
                burden to Appellants by showing how a prior art structure substantially                          
                corresponds to a claimed structure such that it would be reasonable to                           

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