Appeal No. 97-2782 Page 6
Application No. 08/368,993
The anticipation issue
The rejection of claims 26, 29 and 40 under 35 U.S.C.
§ 102(b) is sustained, but not the rejection of claims 39, 45
and 46.
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.), cert. denied, 484 U.S. 827
(1987). A prior art reference anticipates the subject of a
claim when the 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 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
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007