Appeal No. 2004-0591
Application No. 09/195,362
unpatentable over Chatterjee and Du in view of Huckins. Claims 37-40 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Du in view of Chatterjee.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 26, mailed Aug. 7, 2003) for the examiner's reasoning in support of
the rejections, and to appellants’ brief (Paper No. 25, filed May, 6, 2003) and reply brief
(Paper No. 27, filed Oct. 7, 2003) for appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
ANTICIPATION
Initially we note that anticipation by a prior art reference does not require either
the inventive concept of the claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference. See Verdegaal Bros. Inc.
v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied,
484 U.S. 827 (1987). A prior art reference anticipates the subject matter of a claim
when the reference discloses every feature of the claimed invention, either explicitly or
inherently (see Hazani v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358,
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