Appeal No. 97-1835
Application 08/178,068
result of this review, we have reached the determination that
the applied prior art does not support a finding of anticipa-
tion or a prima facie case of obviousness with respect to the
claimed subject matter on appeal. Accordingly, the rejections
on appeal are reversed. Our reasons follow.
Anticipation under 35 U.S.C. § 102 requires that
"each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior
art reference." In re Robertson, 169 F.3d 743, ____, 49
USPQ2d 1949, 1950 (Fed. Cir. 1999) (quoting Verdegaal Bros.,
Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053
(Fed. Cir. 1987)). If the prior art reference does not ex-
pressly set forth a particular element of the claim, that
reference still may anticipate if that element is "inherent"
in its disclosure. To establish inherency, the extrinsic
evidence must make clear that the missing descriptive matter
is necessarily present in the reference, and that it would
have been so recognized by persons of ordinary skill. Robert-
son, 169 F.3d at ____, 49 USPQ2d at 1950-51 (quoting
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007