Board reverses rejection in Ex part Johns

The Board reversed the Examiner in Ex parte Johns based on a missing claim element, an issue of fact.

The key text:

The Examiner’s finding that Troutner describes a device in which the die assemblies are positioned at different elevations with respect to one another is not supported by the preponderance of the evidence of record.

Each of the die assemblies in Figures 1 and 3 of Troutner is positioned at an identical elevation with respect to its adjoining die assemblies. Accordingly, the elements are not arranged or combined in the same manner as in the claim, and anticipation does not lie.

Missing a claim element was fatal for both the anticipation and obviousness rejections.

As to law:

A reference is anticipatory under 35 U.S.C. § 102 only if it discloses each and every element of the claimed invention, either explicitly or inherently, and the elements are arranged or combined in the same manner as in the claim. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Anticipation is a factual inquiry that we resolve by the preponderance of the evidence of record. E.g., In re Epstein, 32 F.3d 1559, 1564 (Fed. Cir. 1994).