Appeal No. 2001-0861 Page 3
Application No. 08/741,964
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the Answer
(Paper No. 17) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 16) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The Rejection Under Section 102
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
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