Appeal No. 2003-0231 Page 9
Application No. 09/749,372
means 38 for providing entry into the second housing 36 or for providing an exit out
from this second housing for the second means 20 for providing information.
In this rejection, the examiner (answer, pp. 3-4) set forth how the claimed subject
matter was readable on Yuen. Specifically, the examiner stated that the carrier of Yuen
(i.e, Yuen's second page 16) was inherently capable of holding a plurality of microscope
slides.
The appellant argues (brief, p. 6-8) that this rejection is improper since Yuen's
container used to store food would be incapable of storing a plurality of microscope
slides because of different depth requirements.
In our view, the limitation that the slide carrier is adapted to hold a plurality of
microscope slides is readable on Yuen's second page 16 which includes well 32 and
three food trays 18 which inherently are capable of holding a plurality of microscope
slides. A prior art reference may anticipate when a claim limitation not expressly found
in that reference is nonetheless inherent in it. See In re Oelrich, 666 F.2d at 581, 212
USPQ at 326; Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 630, 2 USPQ2d
1051, 1053 (Fed. Cir. 1987). Under the principles of inherency, if the prior art
necessarily functions in accordance with, or includes, the claimed limitations (i.e., is
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