Appeal No. 97-4042
Application 08/578,248
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 (Kalman
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984)).
Here, the examiner has taken the position that the tray
of Mackey discloses all the structure set forth in independent
claim 1 and is ?inherently capable of use in the intended
manner depending upon the size of the user’s legs? (answer,
page 3). The appellants disagree, contending that ?Mackey had
no contemplation or suggestion that his tray might be adapted
for use as a lap tray? (brief, page 11). We must point out,
however, it is well settled that if a prior art device
inherently possesses the capability of functioning in the
manner claimed, anticipation exists regardless of whether
there was a recognition that it could be used to perform the
claimed function. See, e.g., In re Schreiber, 128 F.3d 1473,
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