Appeal No. 2006-3283 Page 3
Application No. 10/606,897
OPINION
In reaching our decision in this appeal, we have given careful consideration to
Appellants’ specification and claims, to the applied prior art reference, and to the
respective positions articulated by Appellants and the Examiner. As a consequence of our
review, we make the following determinations.
35 U.S.C. § 102
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. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
The inquiry as to whether a reference anticipates a claim must focus on what subject
matter is encompassed by the claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218
USPQ 781, 789 (Fed. Cir. 1983), it is only necessary for the claims to "'read on'
something disclosed in the reference, i.e., all limitations of the claim are found in the
reference, or 'fully met' by it." While all elements of the claimed invention must appear
in a single reference, additional references may be used to interpret the anticipating
reference and to shed light on its meaning, particularly to those skilled in the art at the
relevant time. See Studiengesellschaft Kohle m.b.H. v. Dart Indus., Inc., 726 F.2d 724,
726-727, 220 USPQ 841, 842-843 (Fed. Cir. 1984).
To support a rejection of a claim under 35 U.S.C. § 102(b), it must be shown that
each element of the claim is found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983).
Initially, we note that anticipation by a prior art reference does not require either
the inventive concept of the claimed subject matter or the recognition of 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). A prior art
reference anticipates the subject of a claim when the reference discloses every feature of
the claimed invention, either explicitly or inherently (see Hazani v. U.S. Int'l Trade
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007