Appeal No. 98-1242 Page 3
Application No. 08/498,884
examiner and the appellant as set forth in the Answer (Paper
No. 12) and the Brief (Paper No. 11), considered in the light
of the guidance provided by our reviewing court.
The Rejection Under 35 U.S.C. § 102(b)
Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles
of inherency, each and every element of the claimed invention.
See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671,
1675 (Fed. Cir. 1994). Anticipation by a prior art reference
does not require either the inventive concept of the claimed
subject matter or recognition of inherent properties that may
be possessed by the reference. See Verdegaal Brothers Inc. v.
Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051,
1054 (Fed. Cir. 1987). Nor does anticipation require that the
reference teach what the applicant is claiming, but only that
the claim on appeal "read on" something disclosed in the
reference, i.e., all limitations of the claim are found 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.
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