Appeal No. 96-0005
Application 07/722,599
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984)); however, the law
of anticipation does not require that the reference teach what
the appellants are claiming, but only that the claims on appeal
"read on" something disclosed in the reference (see Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed.
Cir. 1983), cert. denied, 465 U.S. 1026 (1984)) and the discovery
of a new property or use of a previously known article, even when
that property and use are unobvious from the prior art, cannot
impart patentability to claims to the known article (see In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990)).
As our reviewing court set forth in LaBounty Mfg. Inc. v.
United States Int’l Trade Comm’n at 958 F.2d 1066, 1075, 22
USPQ2d 1025, 1032 (Fed. Cir. 1992) (in quoting with approval from
Dwight & Lloyd Sintering Co. v. Greenawalt, 27 F.2d 823, 828 (2d
Cir. 1928)):
The use for which the [anticipatory] apparatus was
intended is irrelevant, if it could be employed without
change for the purposes of the patent; the statute
authorizes the patenting of machines, not of their
uses. So far as we can see, the disclosed apparatus
could be used for "sintering" without any change
whatever, except to reverse the fans, a matter of
operation.
This principle applies here inasmuch as the smaller watercraft
102 of Metcalf clearly has the capability of being operated
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