Appeal No. 2001-1803
Application No. 09/087,775
“To anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997). In the present case, Borichevsky, a design patent,
does not expressly disclose that the stool shown therein is stackable as claimed, but we
conclude that it would be inherently capable of being so stacked. In the first place, as
appellant states at page 7 of the brief, “the word stack is intended to have its ordinary
meaning wherein individual items are piled in layers or on top of one another.” Certainly,
the stool of Borichevsky is capable of being piled on top of other such stools, and, as so
stacked, would be “free to be offset” as recited in the last three lines of claim 1. Moreover,
the structure of the Borichevsky stool appears to be so similar to that of the stool disclosed
by appellant that it appears that the Borichevsky stool would be inherently capable of being
stacked in the same offset manner as appellant’s. The recitation in claim 1 that the stool is
stackable is simply the recitation of a new intended use for an old product, which does not
make a claim to that old product patentable. In re Schreiber, supra.
On page 2 of the reply brief, appellant asserts that he discloses an enabling
structure that provides a stool which is securely stackable, while Borichevsky does not.
However, whatever that disclosed structure may be, the structure claimed in claim 1 is
readable on Borichevsky.
Appellant’s argument, quoted supra, concerning the sides of the support surface, is
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