Appeal 2007-1476
Application 10/308,866
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim." In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986). See also
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co.,
730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). Since Dias fails
to disclose the claimed steps of "identifying at least an active second
member to replace the first member" in claims 1 and 32 or of "automatically
causing the service to be provided … by another member" in claim 18, Dias
does not anticipate the claims. Accordingly, we will not sustain the
anticipation rejection of claims 1 through 4, 6, 9 through 35, 37, and 40
through 48.2
Regarding the provisional obviousness-type double patenting rejection
of claim 18, Appellants state (Br. 9) that they intend to file a Terminal
Disclaimer upon allowance of either claim 18 or claim 1 of co-pending
Application 10/308,918. Appellants provide no arguments against the
rejection. Accordingly, we will sustain the rejection, pro forma.
ORDER
The decision of the Examiner rejecting claims 1 through 4, 6, 9
through 35, 37, and 40 through 48 under 35 U.S.C. § 102(b) is reversed.
Also, the decision of the Examiner provisionally rejecting claim 18 under
the judicially created doctrine of obviousness-type double patenting is
affirmed.
2 The Examiner should note that our reversal of the art rejection does not
mean that we believe the claims to be patentable, merely that the art of
record was insufficient to support an anticipation rejection.
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