Appeal 2007-2171
Application 09/821,066
1. Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
2. It is well settled that in order for the examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally, Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1431; Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ 1315, 1317
(Fed. Cir. 1988); Lindemann Maschinenfabrik GMBH v. American Hoist
and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
D. Analysis
The issue is whether the Examiner erred in rejecting the claims under
35 U.S.C. § 102 on the ground that Scheer anticipates the claimed subject
matter.
We have carefully reviewed the Appeal Brief and Reply Brief and
find that Appellant has not met his burden of showing that the Examiner has
failed to make a prima facie case of anticipation.
The Examiner made an element-by-element analysis of the claims
showing where in Scheer each element of the claims is described.
Appellant’s response has been to selectively address, and in isolation, a
portion of the Examiner’s position and to leap to the conclusion that the
Examiner has failed to show that Scheer anticipates the claimed subject
matter.
For example, with respect to claims 1, 6, and 13, the Examiner has
clearly stated that Fig. 8 of Scheer describes a database. That is evident to
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013