Appeal No. 97-2739
Application No. 08/210,757
evidence adduced by the examiner is insufficient to establish an
anticipation of appealed claim 1 under 35 U.S.C. § 102(b) or a
prima facie case of obviousness with respect to appealed claims
5 and 7. Our reasoning for this determination follows.
We initially observe that an anticipation under
35 U.S.C. § 102(b) is established only when a single prior art
reference discloses, either expressly or under the principles of
inherency, each and every element of a claimed invention. See
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570,
7 USPQ2d 1057, 1064 (Fed. Cir.), cert. denied, 488 U.S. 892
(1988); RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). Additionally, 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, i.e., all
limitations of the claim are found 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
overruled in part on another issue); SRI Int'l v. Matsushita
Elec. Corp. Of Am., 775 F.2d 1107, 1118, 227 USPQ 577, 583 (Fed.
Cir. 1985). Moreover, anticipation by a prior art reference does
not require either the inventive concept of the claimed subject
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007