Appeal No. 2000-0852 Page 3
Application No. 09/061,314
No. 12) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 11) and Reply Brief (Paper No. 13) for the appellant's arguments thereagainst.
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 Rejection Under Section 102(b)
The guidance provided by our reviewing court with regard to the matter of
anticipation is as follows: Anticipation is established only when a single prior art reference
discloses, either expressly or under the principles of inherency, each and every element of
the claimed invention. See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671,
1675 (Fed. Cir. 1994). Anticipation by a prior art reference does not require either the
inventive concept of the claimed subject matter or recognition of inherent properties that
may be possessed by the reference. See Verdegaal Brothers Inc. v. Union Oil Co. of
California, 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987), nor does it require
that the reference teach what the applicant is claiming, but only that the claim on appeal
"read on" something disclosed in the reference, i.e., all limitations of the claim are found in
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