Appeal No. 1997-3524 Page 8
Application No. 08/336,402
sol and disk depicted in appellants’ drawing figure 5 as argued,
appellants have not pointed to a particular description of those
drawing figures in the application, as filed, that describes the
use of ambient pressure as claimed, or advanced a persuasive
argument that explains how the presence of an ambient atmosphere
surrounding the items in those drawing figures would necessarily
result in an ambient pressure at the submerged location where the
treating liquid contacts the outer surface portion of the porous
body. We note that pressures under the surface of a body of
liquid would have been reasonably expected to be greater than the
surrounding ambient atmosphere above a body of liquid.
Consequently, we will sustain the examiner's 35 U.S.C. § 112,
first paragraph rejection of claim 25.
Rejection under § 102
Initially we note that anticipation by a prior art reference
does not require that reference to recognize either the inventive
concept of the claimed subject matter or the inherent properties
that may be possessed by the prior art reference. See Verdegaal
Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051,
1054 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). A
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