Appeal No. 95-3570
Application 08/215,192
The reference relied upon by the examiner as evidence of
anticipation is:
Albert 5,150,266 Sept. 22, 1992
(filed on Apr. 30, 1990)
Claims 5, 6 and 9 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Albert.
Reference is made to the appellants’ brief (Paper No. 7) and
to the examiner’s answer (Paper No. 8) for the respective
positions of the appellants and the examiner with regard to the
merits of this rejection.
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). In other words, there must be no
difference between the claimed invention and the reference
disclosure as viewed by a person of ordinary skill in the field
of the invention. Scripps Clinic & Research Found. v. Genentech
Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Under principles of inherency, when a reference is silent about
an asserted inherent characteristic, it must be clear that the
missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by
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