Appeal No. 2003-1463 Page 5
Application No. 09/536,341
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a claimed
invention. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be no difference between
the claimed invention and the reference disclosure, as viewed by a person of ordinary
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). 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).
In this instance, Babka discloses a device for use as an oil atomizer only; there is
no disclosure that the atomizer is capable of use for spraying a powder coating product.
Babka’s disclosure of the oil atomizer for “other purposes” referenced by the examiner
relates to use of the atomizer to deliver oil either to an oil engine or for other purposes,
that is, for delivery to devices or locations other than an oil engine. The examiner’s
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