Ex Parte SMITH - Page 6



            Appeal 2007-1925                                                                                
            Application 09/391,869                                                                          
                   6. The Specification discusses that the pocket insert may be                             
                         automatically collated along with the pages:                                       
                               For example, the pages may be collated                                       
                               automatically as they are copied on a copier. Some                           
                               copiers provide a supplemental tray to collate a                             
                               supplement page along with the copied pages, i.e.,                           
                               a supplemental page onto which no information is                             
                               being applied to the page.  The pocket insert of this                        
                               invention is suitable for such copying                                       
                               environments, thereby permitting the insert to be                            
                               collated automatically with the various pages while                          
                               the pages are being photocopied. For this                                    
                               embodiment, the pocket insert should be                                      
                               assembled of standard weight paper, and it is                                
                               important that the insert is arranged in the collator                        
                               tray such that edge 12 (this edge having a single-                           
                               sheet thickness) is pushed by the copier roller                              
                               during collation.                                                            
                         (Specification 6:31 – 7:10).  The Specification thus provides no                   
                         detailed description of what thickness is required to render the insert            
                         passable through a copier or printer in sequence with a sheet of paper             
                         other than to say that “the pocket insert should be assembled of                   
                         standard weight paper.”  Id.                                                       

            Principles of Law Relating to Anticipation                                                      
                   “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,                 

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