Appeal No. 2003-0280 Page 5
Application No. 09/382,120
35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for
"anticipation is the epitome of obviousness." Jones v. Hardy, 727 F.2d 1524, 1529, 220
USPQ 1021, 1025 (Fed. Cir. 1984). See also In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641,
644 (CCPA 1974).
To anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). As stated in In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)) (internal citations omitted):
Inherency, however, may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is not
sufficient. If, however, the disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure should be
regarded as sufficient.
Thus, a prior art reference may anticipate when the claim limitation or limitations not
expressly found in that reference are 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, it
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