Appeal No. 2002-1576
Application No. 09/426,516
USPQ 669, 673 (Fed. Cir. 1984). An anticipating reference must describe the patented
subject matter with sufficient clarity and detail to establish that the subject matter
existed in the prior art and that such existence would be recognized by persons of
ordinary skill in the field of the invention. See In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1657 (Fed. Cir. 1990); Diversitech Corp. v. Century Steps, Inc., 850
F.2d 675, 678, 7 USPQ2d 1315, 1317 (Fed. Cir. 1988). To the extent that the rejection
may be based on the principles of inherency, we note that our reviewing court has set
out clear standards for a showing of inherency, which have not been attained in the
instant case. To establish inherency, the extrinsic evidence "must make 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." In re Robertson, 169
F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (citations omitted).
We are persuaded by appellants that the Section 102 rejection of each claim on
appeal is in error. We thus do not sustain the rejection of claims 11, 13-17, 20, and
22-25 under 35 U.S.C. § 102 as being anticipated by Allen.
Appellants argue that the claimed invention recites the use of a meta data page
to selectively store data pages and that the meta data page is associated with the
virtual tape volume. (See brief at pages 6-7.) Appellants further argue that Allen does
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