Appeal No. 96-0005
Application 07/722,599
anticipated by the Japanese publication, the appellants argue
that neither Metcalf nor the Japanese publication shows a station
on their large unpowered watercraft where an operator may sit in
a forwardly facing direction in such a manner so as to be able to
operate the controls of the smaller watercraft. We must point 6
out, however, 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 Brothers
Inc. v. Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d
1051, 1054 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987). A
prior art reference anticipates the subject matter of a claim
when that reference discloses, either expressly or under the
principles of inherency, each and every element set forth in the
claim (RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
6At oral hearing the appellants’ counsel noted that
independent claim 1 requires an operator station containing
“means for accommodating an operator seated in a forwardly facing
condition” and attempted to assert that the structure of Metcalf
is not the “equivalent” of the structure disclosed in the
appellants’ specification for accomplishing this function within
the meaning of the sixth paragraph of § 112. We decline to
consider such an argument since it has not heretofore been
raised, particularly in view of the fact that we do not have the
benefit of the examiner’s finding regarding equivalents. In
making this determination we note that 37 CFR § 1.192(a)
expressly requires that the brief contain all arguments on which
the appellants intend to rely.
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