Appeal No. 2003-0102 Page 5
Application No. 09/543,439
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). It is not necessary that
the reference teach what the subject application teaches, but only that the claim read
on something disclosed in the reference, i.e., that all of the limitations in the claim be
found in or fully met by the reference. Kalman v. Kimberly Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Initially, we do not agree with the examiner that the language “being free to move
inwardly against the product when vacuum is applied so as to provide cushioning
support to the product” constitutes mere intended use. This language, when read in
combination with the limitation “flexible” and in light of appellants’ underlying disclosure
(specification, page 8, lines 9-26, and page 10, lines 2-11), requires that the at least
one end closure be sufficiently flexible that it is moved inwardly when vacuum is
applied.
We find no express teaching in Curry that the end caps 11 be flexible so as to
move inwardly when the container is subjected to a vacuum. Further, Curry’s
disclosure of deformable plastic or laminated paper material for the end caps is
insufficient, in itself, to convey that such end caps are inherently2 sufficiently flexible to
move inwardly when vacuum is applied as called for in claims 1 and 9. As for Curry’s
use of the term “deformable,” we share appellants’ view, as expressed on page 6 of the
2 Under principles of inherency, when a reference is silent about an asserted inherent
characteristic, it must be clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of ordinary skill. Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
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