Ex parte COHEN et al. - Page 6




          Appeal No. 98-2124                                         Page 6           
          Application No. 08/454,898                                                  


               The appellants argue that the claims under consideration               
          are not anticipated since Biechler does not address the                     
          specific problems which they address.  We must point out,                   
          however, that anticipation by a prior art reference does not                
          require either the inventive concept of the claimed subject                 
          matter or the recognition of inherent properties that may be                
          possessed by the prior art reference.  Verdegaal Bros., Inc. v.             
          Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed.                 
          Cir. 1987).  Moreover, the 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).                               
               With respect to independent claim 1 the appellants contend             
          that the tail portions of the spring contact arms 75,91 of                  
          Biechler are disposed entirely within the housing, rather than              
          extending "from a first surface of housing" as claimed.  This               
          argument is not commensurate in scope with the claimed subject              
          matter.  That is, this limitation does not require that the                 
          tail portions extend from the exterior surface of the housing               








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