Ex Parte KURTZ - Page 5




             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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