Appeal No. 2006-2763
Application 09/785,385
messages based on their media types (DeSimone, col. 5, ll. 24-41) which is the
same as distribution based on the content (Answer 11).
A rejection for anticipation requires that the four corners of a single prior art
document describe every element of the claimed invention, either expressly or
inherently, such that a person of ordinary skill in the art could practice the
invention without undue experimentation. See Atlas Powder Co. v. IRECO Inc.,
190 F.3d 1342, 1347, 51 USPQ2d 1943, 1946-47 (Fed. Cir. 1999); In re Paulsen,
30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994). 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 prior art reference, i.e., all limitations of the claim
are found in the reference, or ‘fully met’ by it.” See also Atlas Powder Co. v.
IRECO Inc., 190 F.3d at 1346, 51 USPQ2d at 1945 (Fed. Cir. 1999) (quoting
Titanium Metals Corp. v. Banner, 778 F.2d 775, 781, 227 USPQ 773, 778 (Fed.
Cir. 1985)).
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013