Appeal No. 2002-0080 Page 3
Application No. 09/170,216
OPINION
We refer to the appellants’ brief and reply brief and to the
answer for the opposing viewpoints expressed by appellants and
the examiner concerning the above noted rejection.1 For the
reasons which follow, we will sustain the examiner's § 102(e)
rejection.
Initially, we note that appellants have indicated that the
claims “can be considered as a group” (brief, page 4). We
therefore limit our discussion to one claim, i.e., claim 1. See
In re Ochiai, 71 F.3d 1565, 1566 n.2, 37 USPQ2d 1127, 1129 n.2
(Fed. Cir. 1995); 37 CFR § 1.192(c)(7)(1999).
Furthermore, we observe that anticipation by a prior art
reference does not require that reference to recognize either the
inventive concept of the claimed subject matter or the inherent
properties that may be possessed by the prior art reference. See
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633, 2
USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987).
A prior art reference anticipates the subject matter of a claim
1 In Paper No. 16, the examiner noted that the reply brief
was considered. The additional comments concerning the reply
brief set forth in that paper have not been considered since such
comments are inappropriate absent express authorization by a
panel of this Board pursuant to 37 CFR § 1.193(b)(1).
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