Appeal No. 2000-0946 Page 6
Application No. 08/704,217
supply is activated, the power source voltage can be determined is unavailing, as claim
1 does not positively recite a controller means which uses the rate of temperature
change to determine the power source voltage.2 It is well established that limitations
not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d
1344, 1348, 213 USPQ 1, 5 (CCPA 1982). The language in the preamble of claim 1
“for determining a voltage of a power source,” merely sets forth an intended use of the
claimed apparatus and does not constitute positive recitation of structure for carrying
out such use.3
After reviewing the Tamura patent in light of the arguments in appellant’s brief,
we conclude that Tamura discloses each and every element recited in appellant’s claim
1. A disclosure that anticipates4 under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the epitome of obviousness."
Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed. Cir. 1984). See
2 Claim 1 is distinct from allowed claim 6 in this regard.
3 The preamble of a claim does not limit the scope of the claim when it merely states a purpose or
intended use of the invention. See In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir.
1994).
4 To anticipate, every element and limitation of the claimed invention must be found in a single
prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001); Scripps Clinic & Research Foundation 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.
Kimberly Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984).
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