Appeal No. 2003-1778 Page 5
Application No. 08/988,292
assessing the propriety of the examiner’s rejections of the
claimed subject matter.
Rejections under 35 U.S.C. § 102(b)
Appellants indicate that the appealed claims stand or fall
together (brief, page 3). Accordingly, we select claim 1 as the
representative claim on which we shall decide this appeal as to
the examiner’s § 102(b) rejections. See 37 CFR
§ 1.192(c)(7)(2000).
Anticipation by a prior art reference does not require that
the reference recognize either the inventive concept of the
claimed subject matter or the inherent properties that may be
possessed by the prior art reference. See Verdegaal Bros. Inc.
v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed.
Cir.), cert. denied, 484 U.S. 827 (1987). A prior art reference
anticipates the subject matter of a claim when the reference
discloses every feature of the claimed invention, either
explicitly or inherently (see Hazani v. Int'l Trade Comm'n, 126
F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997) and RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984)). However, the law of
anticipation does not require that the reference teach what the
appellants teach in their specification, but only that the claims
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