Appeal No. 2004-0663
Application No. 09/375,260
present language may be broader so as to encompass both a display and a storage
rather than just a storage of the indication. Since we find no lack of particularity in the
instant claim language, we will not sustain the rejection.
35 U.S.C. § 102
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, 1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data Systems, Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). However, the law of
anticipation does not require that the reference teach what the appellants are claiming,
but only that the claims on appeal "read on" something disclosed 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).
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
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