Appeal 2007-3148
Application 10/638,885
skill in the art would have appreciated configuring the body in any
shape which would aid in providing the intended use, function and
purpose of the form assembly (Answer 4).
Appellants argue that Meyers does not show an upwardly directed and
inwardly angled taper (Br. 5).
We have considered Appellants’ argument and we cannot sustain the
Examiner’s § 102(b) rejection of claim 7.
The Examiner’s statement of the rejection quoted above indicates that
the Examiner improperly applied an obviousness analysis to claim 7 when
determining the patentability of the claim under § 102(b). In fact the
Examiner states in the Answer that
Meyers shows the recited limitations except for the exact shape [of
the] box configuration. See [the] obviousness rational[e] above.
(Answer 5).
A § 102 rejection addresses whether the claimed invention is
anticipated by the prior art. 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).
In light of the Examiner’s application of the incorrect legal standard in
determining whether claim 7 is anticipated under § 102(b) by Meyers, we
reverse the Examiner’s § 102(b) rejection of claim 7.
REMAND
We remand the application to the Examiner to determine whether
claim 7 should be rejected under § 102(b) or § 103(a) over Meyers (US
7
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