Ex parte RICH - Page 9




               Appeal No. 1998-2383                                                                         Page 9                 
               Application No. 08/116,355                                                                                          


               attached stationarily at one end, at a door stop (52) or to a permanent wall bracket (column 5,                     
               lines 37-40), and attached at the other end, by means of a foot strap (79), to the foot of the leg                  
               which is not kneeling.  The exerciser takes a sprinter start position with the leg extended behind                  
               and slowly pulls the leg forward, away from the knee of the kneeling leg, to stretch and                            
               elongate the element.  The exerciser then slowly returns the moving leg to the starting position.                   
               This movement also moves the foot of the moving leg toward and away from the foot of the                            
               kneeling leg.  While Tee explicitly discloses that the exercise illustrated in Figure 4E exercises                  
               the thigh, it is apparent to us that such movement of the leg necessarily also exercises the                        
               gluteal muscles of the exerciser.  Thus, we conclude that Tee anticipates  the method of claim5                                       

               35.  A disclosure that anticipates under 35 U.S.C.  102 also renders the claim unpatentable                        
               under 35 U.S.C.  103, for "anticipation is the epitome of obviousness."  Jones v. Hardy, 727                       
               F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed. Cir. 1984).  See also In re Fracalossi, 681                              
               F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181                               
               USPQ 641, 644 (CCPA 1974).  Accordingly, we shall sustain the examiner's rejection of claim                         
               35, and claims 36-38 which stand or fall with claim 35 (brief, page 8).                                             


                       Anticipation is established when a single prior art reference discloses, expressly or under the principles of5                                                                                                          
               inherency, each and every element of a claimed invention.  RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d   
               1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).  It is not necessary that the reference teach what the subject      
               application teaches, but only that the claim read on something disclosed in the reference, i.e., that all of the    
               limitations in the claim be found in or fully met by the reference.  Kalman v. Kimberly Clark Corp., 713 F.2d 760,  
               772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).  Under the principles of inherency, if 
               the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the
               performance of the questioned function, it seems to be well settled that the disclosure should be regarded as       
               sufficient.  See In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)                                    







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