Appeal No. 1999-1708
Application 08/731,320
35 U.S.C. § 102
Claims 1-6, 13 and 14 stand rejected under 35 U.S.C. § 102 as anticipated
by Everard.
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). As stated In re Oelrich, 666 F.2d 578, 581, 212
USPQ 323, 326 (CCPA 1981)(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)) (internal citations omitted):
Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a
given set of circumstances is not sufficient. If, however, 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.
Thus, a prior art reference may anticipate when the claim limitation or limitations not
expressly found in that reference are nonetheless inherent in it. In re Oelrich,
supra; Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053
(Fed. Cir.), cert. denied, 484 U.S. 827 (1987). Under the principles of inherency, if the
prior art necessarily functions in accordance with, or includes, the claimed limitations, it
anticipates. In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986).
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