Appeal No. 2002-2101
Application 09/068,540
particular, relative, selected viscosity because such a viscosity
existed in the preform stage of the invention. This selected
material, which is retained in the final fiber product, must have
had the here claimed viscosity found in its preform stage. This
is the essence of appellants’ invention.
Therefore, in our opinion, the claim requires that the
material is limited to a particular viscosity as it existed in
its preform stage. This condition, even though it is defined in
this manner (in the preform stage), cannot be ignored simply
because the nature of the appellants’ invention required that the
viscosity be defined in the context of the preform stage.
We observe that the examiner has not taken an inherency
position with respect to Shiraishi. Also, Shiraishi is silent
about viscosity values of any material. We further note that it
is well settled that anticipation is established only when a
single prior art reference discloses, expressly or under
principles of inherency, each and every element of a claimed
invention. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d
1440, 1442, 221 USPQ 385, 388 (Fed. Cir. 1984). Thus, the
examiner has failed to establish that Shiraishi expressly or
inherently discloses the viscosity characteristics of the
appellants’ claimed fiber. We therefore reverse the rejection of
claims 6, 8, and 12 through 14 under 35 U.S.C. § 102(b) as being
anticipated by Shiraishi.
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