Appeal 2007-0781
Application 10/003,150
Applicant has addressed this issue above. In short, there is no reasonable
basis to interpret a ‘printing service’ ‘determining printing costs’from
attributes of a scaled-down version of a document as the photographer
merely reviewing [sic, reviews] his images.” Reply Br. 6-7.
C. PRINCIPLES OF LAW
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
It is well settled that in order for the examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally, Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1431; Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ 1315, 1317
(Fed. Cir. 1988); Lindemann Maschinenfabrik GMBH v. American Hoist
and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
There must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill in the field of
the invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
D. ANALYSIS
We will not sustain the rejection because, after a careful review of
Garfinkle, we are unable to find any explicit teaching of a “network-based
printing service” to retrieve a scaled-down version of a full-sized document
to be printed from at least one store via a network as required by the claim.
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