Appeal 2007-1864
Application 10/100,717
Claims 1-35 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Hutchins.2
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
OPINION
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir. 1984); W.L. Gore and Associates, Inc. v. Garlock, Inc., 721
F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983).
2 We note that the Examiner’s Answer does not expressly state the
Examiner’s grounds of rejection, but instead refers us to a previous office
action (Answer 3). Such incorporations by reference, however, are improper
under current practice. See MPEP § 1207.02 (“An examiner's answer should
not refer, either directly or indirectly, to any prior Office action without fully
restating the point relied on in the answer.”).
3 An Appeal Brief was first mailed July 12, 2006. A second Brief, however,
was filed Aug. 14, 2006 to correct various informalities. In response, a first
Examiner’s Answer was mailed Dec. 6, 2006 which was followed by a
Reply Brief filed Jan. 16, 2007. However, a second Answer was mailed
Mar. 6, 2007 to correct various informalities. Throughout this opinion, we
refer to (1) the Aug. 2006 Brief; (2) the Reply Brief; and (3) the March 2007
Answer.
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013