Appeal No. 2003-1339 Page 4
Application No. 09/810,813
every element of the claimed invention. See, for example, In re Paulsen, 30 F.3d 1475,
1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Anticipation by a prior art reference
does not require either the inventive concept of the claimed subject matter or
recognition of inherent properties that may be possessed by the reference. See
Verdegaal Brothers Inc. v. Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d
1051, 1054 (Fed. Cir. 1987). Nor does it require that the reference teach what the
applicant is claiming, but only that the claim on appeal "read on" something disclosed in
the reference, i.e., all limitations of the claim are found in 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).
While the appellants argue that the parameter that is “related to the energy
supplied to the patient” must be either voltage or current, claim 21 merely requires
“a parameter.” Voltage and current are not recited in claim 21, and therefore the
appellants’ argument is based upon limitations that are not present in the claim, which
makes it unpersuasive on its face.1 In the Niemi method, an impedance comparison
unit “i.e., voltage and current comparator,” is used to disable the pulse generator when
1See In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CPA 1982).
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