Appeal No. 98-2352
Application 08/245,870
this regard, we note that it is emphasized in Smidt (col. 2, lines 26-34) that the device
therein provides isolation of the muscle group involved in trunk flexion and extension
and “permits immobilization of muscles below the axis of rotation of spinal flexion and
extension.” Note also column 11, line 31 et seq., of Smidt. In addition, we observe
that anticipation by a prior art reference does not require either disclosure of the
inventive concept of the claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference. See Verdegaal Bros,
Inc. v. Union Oil of Calif., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert.
denied, 484 U.S. 827 (1987). All that is required is that the claims on appeal "read
on" something disclosed in the prior art reference, i.e., all limitations of the claims 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. 1026 (1984).
Based on the foregoing, the examiner’s rejection of claim 1 under 35 U.S.C.
§ 102(b)/103 relying on Smidt is sustained. Since the examiner’s rejections of
dependent claims 2, 3, 6, 7 and 9 have not been separately argued by appellants, it
follows that these claims will fall with claim 1.
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