Ex parte WEST - Page 7




          Appeal No. 1999-1785                                                        
          Application No. 08/512,656                                                  

          contain a groove for a seal as required by the Totten                       
          reference and Totten accordingly does not anticipate                        
          applicant’s invention claimed in twice-amended Claim 11”                    
          (brief, page 6).  We do not agree.  A prior art reference                   
          anticipates the subject of a claim when the reference                       
          discloses every feature of the claimed invention, either                    
          explicitly or inherently (see Hazani v. Int'l Trade Comm'n,                 
          126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997) and              
          RCA Corp. v. Applied Digital Data 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)).  Appellant’s claim 11 on appeal merely requires that               
          the external member and the internal member form a “seat” for               
          the at least one seal member.  We observe that appellant’s                  
          groove 59 in external member 52" (Figure 6C) defines, at least              
          in part, a recess or “seat” for seal member 54.  Similarly,                 
          Totten shows grooves 166, 168 which at least in part define                 

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