Ex parte KOBAYASHI et al. - Page 6




                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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