Appeal 2007-1666
Application 10/132,904
7. Yin discloses that the backstop 28 defines a fixed reference for the desirable
exposure of the front blade 2 (Yin, col. 3 ll. 10-13), and not the fins.
8. Yin refers to the multi-component element mounted on the rigid base 22 as
the “guard structure 4” (Yin, col. 2, l. 65; col. 3, ll.4-8), rather than in the
singular, “a guard”, as claimed.
PRINCIPLES OF LAW
During prosecution the PTO gives claims their “broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372,
54 USPQ2d 1664, 1667 (Fed. Cir. 2000).
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
The Board may find in the prior art a feature which is capable of
performing a function recited in the claims. See In re Swinehart, 439 F.2d 210,
213, 169 USPQ 226, 228 (CCPA 1971) (“where the Patent Office has reason to
believe that a functional limitation asserted to be critical for establishing novelty in
the claimed subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied on.”)
“The Board's finding that the scaled-up version of figure 5 of Harz would be
capable of performing all of the functions recited in Schreiber's claim 1 is a factual
5
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