Appeal No. 2004-0191 Page 5
Application No. 09/072,241
nevertheless is supported by the original disclosure and, applying the guidance from
our reviewing set out above, the rejection is not well taken.
The rejection of claims 18, 19 and 21-27 under 35 U.S.C. § 112, first paragraph,
therefore is not sustained.
The Rejection Under Section 102
Independent claim 21 and dependent claims 22 and 26 stand rejected as being
anticipated by Hoar. Anticipation under 35 U.S.C. § 102(b) is established only when a
single prior art reference discloses, either expressly or under the principles of
inherency, each and every element of the claimed invention. See, for example, In re
Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Anticipation by a
prior art reference does not require either the inventive concept of the claimed subject
matter or recognition of inherent properties that may be possessed by the reference.
See Verdegaal Brothers Inc. v. Union Oil Co. of California, 814 F.2d 628, 633, 2
USPQ2d 1051, 1054 (Fed. Cir. 1987). Nor does it require that the reference teach what
the applicant is claiming, but only that the claim on appeal "read on" something
disclosed in the reference, i.e., all limitations of the claim are found in the reference.
See Kalman v. Kimberly-Clark Corp, 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983), cert. denied, 465 U.S. 1026 (1984).
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