Appeal 2007-3686
Application 10/965,349
The Examiner has rejected the claims on appeal as follows:
1. Claims 1 through 9 under 35 U.S.C. § 102(e) as anticipated by
the disclosure of Doerge (Answer 3)1; and
2. Claims 1 through 9 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of Lund (Answer 3-4).
The Appellants appeal from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. §§ 102(b) and 103(a).
PRINCIPLES OF LAW, FACTS, ISSUES and ANALYSES
ANTICIPATION
Under 35 U.S.C. § 102, anticipation is established only when a single
prior art reference describes, either expressly or under the principle of
inherency, each and every element of a claimed invention. In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990). The law of anticipation, however, does
not require that the prior art reference teach Appellants’ purpose or utility
described in the Specification, but only that the claims on appeal “read on”
something disclosed in the reference. See Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772 (Fed. Cir. 1983).
As evidence of anticipation of the subject matter defined by claims 1
through 9 under 35 U.S.C. § 102, the Examiner has relied on the disclosure
of Doerge. We decide the propriety of this rejection based on claim 8 alone
since the Appellants have not supplied any substantive arguments for the
1 Doerge is available as “prior art” under 35 U.S.C. § 102(b). Please note
that the instant application has the effective filing date of October 14, 2004,
more than one year after the publication date of Doerge. Thus, in the event
of further prosecution of the claimed subject matter, the Examiner must
seriously consider the applicability of Doerge under § 103 as well.
3
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