Appeal No. 2002-1143
Application No. 09/085,933
appellant is claiming, but only that the claims on appeal “read on”
something disclosed 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). If a prior art device inherently
possesses the capability of functioning in the manner claimed,
anticipation exists regardless of whether there was a recognition
that it could be used to perform the claimed function. See, e.g.,
In re Schrieber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed.
Cir. 1997).
In light of the foregoing, and pursuant to our authority under
37 CFR § 1.196(b), we enter the following new rejections.
Claim 21 is rejected under 35 U.S.C. § 102(b) as being
anticipated by each of Dow, King, Graham, Folden and Neuhauser.
In Dow, temple-roller “a” comprises a tubular wall having an
inner surface defining a bore, and an outer surface interrupted by
an unnumbered groove or notch that subdivides the outer surface
into a plurality of core segments. Thus, template-roller “a” meets
all the structural limitations found in the body of claim 21.
Further, Dow’s temple roller constitutes a “core” as broadly set
forth in the preamble of claim 21 in that it is fully capable of
functioning, without modification, as a core within the generally
accepted meaning of that term notwithstanding that Dow relates to
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007