Appeal No. 97-0331
Application 08/359,562
Claims 1, 8 and 9 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Malm. Initially we note 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 Bros., Inc. v. Union Oil Co., 814 F.2d
628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987), cert. denied, 484
U.S. 827 (1987). A prior art reference anticipates the subject
matter of a claim when that reference discloses every feature of
the claimed invention, either explicitly or inherently (see
Hazani v. Int’l Trade Comm’n, 126 F.3d 1473, 1477, 44 USPQ2d
1358, 1361 (Fed. Cir. 1997)) and RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)); however, the law of anticipation does not require
that the reference teach what the appellant is 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)).
Viewing Fig. 2 of Malm, it is readily apparent that the hand
of a user may be inserted through opening 5 in such a manner that
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007