Appeal 2007-1360
Application 10/605,699
those arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed waived [see 37
C.F.R. § 41.37(c)(1)(vii)].
ISSUES
(i) Under 35 U.S.C § 102(b), does Kim have a disclosure which
anticipates the invention set forth in claims 1-10 and 15-31?
(ii) Under 35 U.S.C § 102(b), does Magee have a disclosure which
anticipates the invention set forth in claims 1, 7, and 11-14.
PRINCIPLES OF LAW
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharm. Corp.,
432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005), citing
Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). Anticipation of a
patent claim requires a finding that the claim at issue “reads on” a prior art
reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51
USPQ2d 1943, 1945 (Fed. Cir. 1999) (“In other words, if granting patent
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