Appeal No. 97-0972
Application 08/399,571
when that reference discloses, either expressly or under the
principles of inherency, each and every element of a claimed
invention. See RCA Corp. v. Applied Digital Data Systems, 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. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983).
Considering specifically the rejection of claims 1-12 under
35 U.S.C. § 102(b) as being anticipated by Devney, the examiner
has taken the position that “the function of the appellant’s
elongate member is not considered to be patentable in a utility
patent” (answer, page 5). This is incorrect. The various
functional limitations in the claims (e.g., that the elongated
member is “adapted to extend between an armrest assembly and a
seat member” as set forth in claim 1) set forth a function which
the apparatus must be structurally capable of performing (see,
e.g., In re Venezia, 530 F.2d 956, 959, 189 USPQ 149, 151-52
(CCPA 1976)) and such a functional statement must be given full
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