Appeal 2007-2171
Application 09/821,066
to prove anticipation is clear - each and every element of the claim
must be disclosed by the reference in as great detail as claimed.
Claim 1 requires defining a database for indicating functional
relationships between a plurality of parts; and searching the database
to identify one or more groups of functionally interchangeable parts.
Each of the Examiner's attempts to show either element fails, as
Scheer never discloses any such database, and does not disclose any
such detail in as great detail as claimed.
The Examiner cites to paragraphs 147 and 171:
….
The Examiner has not proven his alleged anticipation At most,
Scheer discloses determining if the distributor has access to any
equivalent products (¶147), but does not say how. Scheer discloses
that a customer can be provided with an option to take a substitute
(¶171) but does not disclose how to determine what products are
substitutes.
It is quite well settled that 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) and The identical invention must be
shown in as complete detail as is contained in the … claim."
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d
1913, 1920 (Fed. Cir. 1989). See, MPEP § 2131. Without disclosing a
database for indicating functional relationships between a plurality of
parts; and searching the database to identify one or more groups of
functionally interchangeable parts, Scheer cannot anticipate
these claims.
(Reply Br. 2-3).
15. The Appeal Brief does not address the disclosure at Fig. 8 of Scheer
that the Examiner relied upon to show that the subject matters of claims 1, 6,
and 13 are described in Scheer.
C. Principles of Law
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