Appeal 2007-0838
Application 09/851,242
Anticipation Rejection A
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently. In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Here, each of rejected claims 1, 16 and 19 require a winding step wherein
a hollow fiber fabric is wound around a center tube.
The Examiner maintains that JP 11-169676 describes a method that
anticipates appealed claims 1, 16, and 19 (Answer 3-4: JP 11-169676,
¶ 0026).
Appellants contend that the Examiner’s anticipation rejection is in
error because the Examiner has not established, inter alia, that JP 11-169676
describes a step of winding a hollow fiber fabric around a center tube as part
of a contactor forming method.2
It is well settled that the burden of establishing a prima facie case of
anticipation resides with the Patent and Trademark Office (PTO). See In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). In the
case before us, the Examiner has not fairly pointed out where JP 11-169676
describes a method including a step wherein a hollow fiber fabric is wrapped
around a center tube. In this regard, the Examiner points to ¶ 0026 of JP 11-
169676 as describing such a step (Answer 3). However, our review of the
referred to paragraph of the applied reference reveals no such description. It
follows that we shall reverse the Examiner’s anticipation rejection of claims
1, 16 and 19 over JP 11-169676 on this record.
2 Our references to the Brief herein are to the Brief filed on January 10,
2006, unless otherwise specified.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013