Appeal No. 2002-1677 Page 6
Application No. 08/944,817
For the reasons set forth above, the decision of the examiner to reject claims 1
to 11 under 35 U.S.C. § 112, second paragraph, is reversed.
The anticipation rejection
We will not sustain the rejection of claims 1 to 3, 6 to 9 and 14 to 16 under
35 U.S.C. § 102(b).
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a claimed
invention. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be no difference between
the claimed invention and the reference disclosure, as viewed by a person of ordinary
skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc.,
927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991). When the claimed
invention is not identically disclosed in a reference, and instead requires picking and
choosing among a number of different options disclosed by the reference, then the
reference does not anticipate. Thus, the invention must have been known to the art in
the detail of the claim; that is, all of the elements and limitations of the claim must be
shown in a single prior reference, arranged as in the claim. See Karsten Mfg. Corp. v.
Cleveland Gulf Co., 242 F.3d 1376, 1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001);
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