Appeal No. 2003-0768
Application No. 09/396,287
OPINION
Anticipation is established only when a single prior art reference discloses,
expressly or under 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), cert. dismissed, 468 U.S. 1228 (1984), citing Kalman
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984).
Independent claims 14 and 30 each requires materials being selected from a list
of materials to produce a second list of materials for delivery to one or more of a
plurality of locations. Claim 22 does not recite a “second list” but does require
“materials being selectable to produce a manifest with manifested materials for delivery
to one or more of said plurality of delivery locations...”
The examiner contends that this feature is “inherent” in Kovarik in that “it would
only be logical to add another list of materials to the application in order to acknowledge
the addition of materials especially since the application is customizable” (answer-page
5, referring to Kovarik’s teaching of a user customizing a tracking application at column
14, lines 54-56).
We disagree.
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