Appeal No. 2004-0136 Page 5
Application No. 09/761,340
indicated by the broken lead line and 238). From our perspective, this would have been
evident to the artisan and does not cause the claim to be indefinite.
The Section 112 rejection is not sustained.
The Rejections Under Section 102(b)
The guidance provided by our reviewing court with regard to the matter of
anticipation is as follows: Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles of inherency, each and
every element of the claimed invention. See, for example, In re Paulsen, 30 F.3d 1475,
1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Anticipation by a prior art reference does
not require either the inventive concept of the claimed subject matter or recognition of
inherent properties that may be possessed by the reference. See Verdegaal Brothers
Inc. v. Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.
1987). Nor does it require that the reference teach what the applicant is claiming, but
only that the claim on appeal "read on" something disclosed in the reference, that is, all
limitations of the claim are found in the reference. See Kalman v. Kimberly-Clark Corp,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984).
At the outset, we point out that the appellants argue with regard to both of the
Section 102 rejections that the references do not disclose or teach boots having a
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