Appeal No. 98-1238
Application No. 08/115,187
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections:
Claims 1 and 5 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Hubbard. Initially we note that a prior
art reference anticipates the subject matter of a claim when
that reference discloses every feature of the claimed
invention, either explicitly or inherently. Hazani v. U.S.
Int’l Trade Comm’n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361
(Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
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. In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
See also In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990): “The discovery of a new property or use of a
previously known composition, even when that property and use
are unobvious from prior art, can not impart patentability to
claims to the known composition.”
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