Appeal No. 2004-0214 Page 8
Application No. 09/446,516
The prior art rejection of claims 1 to 12, 15 to 17, 20 to 32, 34 and 35
We will not sustain the rejection of claims 1 to 12, 15 to 17, 20 to 32, 34 and 35
under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C.
§ 103 as obvious over Deaton.
To anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). As stated in In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)) (internal citations omitted):
Inherency, however, may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is not
sufficient. If, however, the disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure should be
regarded as sufficient.
Thus, a prior art reference may anticipate when the claim limitation or limitations not
expressly found in that reference are nonetheless inherent in it. See In re Oelrich, 666
F.2d at 581, 212 USPQ at 326; Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
630, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Under the principles of inherency, if the
prior art necessarily functions in accordance with, or includes, the claimed limitations, it
anticipates. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986).
However, inherency is not necessarily coterminous with the knowledge of those of
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