Appeal No. 1998-2941 Page 13
Application No. 08/061,985
Reexamination Control No. 90/003,682
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)); however, 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), cert. denied,
465 U.S. 1026 (1984)). In addition to identity of invention,
anticipation requires that a prior art reference must be
enabling, thus placing the allegedly disclosed matter in the
possession of the public. Thus, it is well established that a
prior art reference cannot anticipate an invention under
section 102 unless it is enabling. See In re Paulsen, 30 F.3d
1475, 1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994); In re
Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed. Cir.
1985). However, prior art references are presumed to be
enabling. See In re Sasse, 629 F.2d 675, 681, 207 USPQ 107,
111-12 (CCPA 1980)(citing In re Jacobs, 318 F.2d 743, 745-46,
137 USPQ 888, 889-90 (CCPA 1963)). Thus, it is also well
established patent law that the appellants bear the burden of
introducing evidence that the applied reference lacks an
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