Appeal No. 2004-2111
Application No. 09/535,550
It is well settled that anticipation is established when a
single prior art reference discloses, expressly or under
principles of inherency, each and every element of a claimed
invention. RCA Corp. v. Applied Digital Data Sys., Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
Here, the examiner finds that each of the applied references
discloses a component formed from an alloy which fully
corresponds to the alloy composition defined by appealed
independent claim 28, and the appellant does not contend
otherwise. Instead, the appellant argues that claim 28
distinguishes from each of the applied references by virtue of
the recitation “for use in molten melts which include magnesium.”
This argument is not well taken.
As explained in the answer, it is questionable whether the
appellant’s independent claim is limited to a component “for use
in molten melts which include magnesium.” In any event, it is
reasonable to consider, as the examiner has done, the prior art
alloys of the here applied references to inherently possess the
capability of such a use. See Ex parte Levy, 17 USPQ2d 1461,
1463-64 (Bd. Pat. App. & Int. 1990) . It is the compositional
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