Appeal No. 98-1233
Application No. 08/612,045
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), cert denied, 465 U.S. 1026 (1984).
Moreover, 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,
1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). See also
LaBounty Mfg. v. Int’l Trade Comm’n, 958 F.2d 1066, 1075, 22
USPQ2d 1025, 1032 (Fed. Cir. 1992) (in quoting with approval
from Dwight & Lloyd Sintering Co. v. Greenawalt, 27 F.2d 823,
828 (2d Cir. 1928)):
The use for which the [anticipatory] apparatus was
intended is irrelevant, if it could be employed
without change for the purposes of the patent; the
statute authorizes the patenting of machines, not of
their uses. So far as we can see, the disclosed
apparatus could be used for "sintering" without any
change whatever, except to reverse the fans, a
matter of operation. [Alteration in original.]
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