Appeal No. 96-3949
Application No. 08/230,383
allegation that a key claimed feature is implied in the prior
art. On this particular point, we cannot agree with
Appellants. The Examiner has utilized the terminology
"inherently imply" at pages 5 and 8 of the Answer. In our
view, it is clear that the Examiner is attempting to rely on
the principles of inherency with regard to the single prior
art reference to Okude regardless of the exact terminology
used in the rejection. The prior art reference need not
expressly disclose each claimed element in order to anticipate
the claimed invention. See Tyler Refrigeration v. Kysor
Indus. Corp., 777 F.2d 687, 689, 227 USPQ 845, 846-847 (Fed.
Cir. 1985). Rather, if a claimed element (or elements) is
inherent in a prior art reference, then that element (or
elements) is disclosed for purposes of finding anticipation.
See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
631-33,
2 USPQ2d 1051, 1052-54 (Fed. Cir. 1987).
As to the merits, however, of the Examiner's position
with regard to the inherency of storing cell transpositions in
Okude, it is our view, after careful review of Okude and
Appellants' arguments, that the Examiner has not made a prima
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