Appeal No. 2002-1143
Application No. 09/085,933
skill in the art would not have considered the wide, relatively
shallow, reduced diameter segments of Shiba’s roller delineated by
the smaller diameter portions 104 as constituting “slots” within
either the generally accepted meaning of that word,4 or the meaning
of the claim term “slot” when it is read in light of appellant’s
disclosure.5
On this basis, we are constrained to reverse the standing
rejection of claims 21 and 26 as being unpatentable over Shiba.
New Grounds of Rejection
Regarding the issue of anticipation of a claim by a prior art
reference, we are guided by the following principles. Anticipation
does not require either the inventive concept of the claimed
subject matter or the recognition of inherent properties that may
be possessed by the prior art reference. 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). Additionally, the law of
anticipation does not require that the reference teach what
4The noun “slot” may mean “[a] long narrow groove, opening
or notch. . . .” Webster’s II New Riverside University
Dictionary, The Riverside Publishing Company, copyright © 1984 by
Houghton Mifflin Company.
5See, for example, page 6, lines 9-12 of appellant’s
specification, as well as element 20 in Figure 3.
4
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