Appeal No. 1999-1504 Page 3
Application No. 08/787,262
Reference is made to the main and reply briefs (Papers No. 12 and 15) and the final
rejection and answer (Papers No. 9 and 13) for the respective positions of the appellant and the
examiner with regard to the merits of these rejections.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our review, we
make the determinations which follow.
The anticipation rejections
Anticipation is established only when a single prior art reference discloses, expressly or
under the principles of 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). In other words, there must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill in the field of the invention.
Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d
1001, 1010 (Fed. Cir. 1991). 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.
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