Appeal No. 2002-1524 Page 3
Application No. 09/423,526
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. 15) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 14) and Reply 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 Rejections Under Section 102
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, for example, In re Paulsen, 30 F.3d 1475,
1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). 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
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