Appeal 2007-1098
Application 10/026,059
1 E. Principles of law
2 For determining patentability over prior art, the name of the game is the
3 claim. In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir.
4 1998). Specifying a claim limitation by functional language is permitted by 35
5 U.S.C. § 112, sixth paragraph, which states:
6 An element in a claim for combination may be expressed as a
7 means or step for performing a specified function without the recital
8 of structure, material, or acts in support thereof, and such claim shall
9 be construed to cover the corresponding structure, material, or acts
10 described in the specification and equivalents thereof.
11
12 To establish anticipation under 35 U.S.C. § 102, each and every element in a
13 claim, arranged as is recited in the claim, must be found in a single prior art
14 reference. Karsten Manufacturing Corp. v. Cleveland Golf Co., 242 F.3d 1376,
15 1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001). Anticipation can be found when a
16 claim limitation is inherent or otherwise implicit in the relevant reference.
17 Standard Havens Products, Inc. v. Gencor Industries, Inc., 953 F.2d 1360, 1369,
18 21 USPQ2d 1321, 1328 (Fed. Cir. 1991). But for establishing inherency, that
19 which is missing in the express description must necessarily be present and would
20 be so recognized by one with ordinary skill in the art. Continental Can Co. USA,
21 Inc. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir.
22 1991).
23 F. Analysis
24 Without fixing the meaning of “thermal mass,” a meaningful decision
25 cannot be made. It appears that both the applicants and the Examiner have
26 assumed that “thermal mass” refers to a material’s property to absorb and retain
27 heat per unit change in temperature. The higher the material’s thermal mass, the
4
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