Appeal No. 97-0972
Application 08/399,571
must possess and, therefore, this language is also functional in
character. That is, the appellants are merely defining the shape
or structural configuration of the hold-down device in terms of
its functional interrelationship with the theater seat when it is
used in its intended manner, rather than positively reciting the
theater seat as a part of the claimed combination. Since we are
not of the opinion that the theater seat has been positively set
forth as a part of the claimed combination, we find no
inconsistency between the preamble and the body of the claim as
the examiner asserts. This being the case, we will not sustain
the rejection of claims 1-12 under 35 U.S.C. § 112, second
paragraph.
Turning now to the various rejections under 35 U.S.C.
§ 102(b), we initially 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
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007