Appeal No. 1998-1970
Application No. 08/587,134
the applied prior art reference, and to the respective
positions articulated by appellants and by the examiner. As a
consequence of this review, we have made the following
determinations:
Before addressing the examiner's rejection specifically,
we note that on page 4 of the brief, appellants have indicated
that ?claim 14 is more limited than claim 13" and thus "more
patentable than claim 13." In contrast to the examiner, we
understand this statement by the appellants to indicate that
claims 13 and 14 should not be grouped together. Therefore we
shall treat claims 13 and 14 separately.
An anticipation under 35 U.S.C. 102(b) is established
when a single prior art reference discloses, either expressly
or under principles of inherency, each and every element of a
claimed invention. See RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984).
However, we observe that the law of anticipation does not
require that the reference teach what the appellant has
disclosed but only that the claims on appeal "read on"
something disclosed in the reference, i.e., all limitations of
4
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