Appeal No. 2004-1202
Application No. 09/908,938
OPINION
In reaching our conclusion on the anticipation issues2
raised in this appeal, this panel of the board has carefully
considered appellant’s specification3 and claims, the applied
teachings, and the respective viewpoints of appellant and the
2 Anticipation under 35 U.S.C. § 102(b) is established only
when a single prior art reference discloses, either expressly or
under principles of inherency, each and every element of a
claimed invention. See In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994); In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); and RCA
Corp. v. Applied Digital Data Sys., 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
specifically what an appellant has disclosed and is claiming but
only that the claims 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).
3 As acknowledged by appellant in the specification (page
2), prior to the present invention, a known mountain hiking boot
(DE 42 29 036) evidenced the feature of overlapping quarters
having “substantially identical flexibility.” As to the latter
configuration, however, it is not clear to us as to whether the
upper quarter (overlapping) is more flexible than the lower
quarter in the noted foreign language disclosure, considering the
content of appellant’s independent claims in the present
application.
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