Ex Parte SMITH et al - Page 4




              Appeal No. 2004-0334                                                               Page 4                
              Application No. 08/853,608                                                                               


                     A claim is anticipated only if each and every element as set forth in the claim is                
              found, either expressly or inherently described, in a single prior art reference.                        
              Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.                      
              Cir.), cert. denied, 484 U.S. 827 (1987).  The inquiry as to whether a reference                         
              anticipates a claim must focus on what subject matter is encompassed by the claim and                    
              what subject matter is described by the reference.  As set forth by the court in Kalman                  
              v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.                    
              denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on' something                
              disclosed in the reference, i.e., all limitations of the claim are found in the reference, or            
              'fully met' by it."                                                                                      


                     In this case, claims 1 and 6 (the independent claims on appeal) are not                           
              anticipated by Porter for the reasons set forth on pages 16-22 and 26-31 of the brief                    
              and pages 6-9 of the reply brief.  Specifically, Porter does not disclose the following                  
              structural limitations of claim 1:                                                                       
              (1) "Z referencing means on a sleeve attached to said autochanger storage rack,                          
              providing preliminary, intermediate and final Z direction referencing between said data                  
              cartridge and said data cartridge caddy during installation of said data cartridge into                  
              said data cartridge caddy by said data cartridge handling mechanism of said                              









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