Appeal No. 2004-1945 Page 3
Application No. 09/524,213
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art reference to Farris, and
to the respective positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations which follow.
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)).
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