Appeal No. 2004-2161 Page 3
Application No. 10/028,875
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The Rejection Under Section 102
The first of the examiner’s rejections is that claim 1, the sole independent claim,
and claims 2, 5-8, 14 and 17-23, all of which depend from claim 1, are anticipated1 by
Beals. The only argument provided in the Brief in response to this rejection is that the
examiner’s position that in the Beals device first section 190 of bendable piece 180 is
not “attached to” second body 170 by means of its contact with transverse bar portion
192 when first body 160 is moved with respect to the second body, and for this reason
Beals does not disclose or teach all of the subject matter recited in claim 1. We agree.
In the Reply Brief, the appellants additionally argue that first section 190 is not
1Anticipation is established only when a single prior art reference discloses, either expressly or
under the principles of inherency, each and every element of the claimed invention. See In re Paulsen,
30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Anticipation by a prior art reference does not require either the
inventive concept of the claimed subject matter or recognition of inherent properties that may be
possessed by the reference. See Verdegaal Brothers Inc. v. Union Oil Co. of California, 814 F.2d 628,
633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987). Nor does it require that the reference teach what the
applicant is claiming, but only that the claim on appeal "read on" something disclosed in the reference, i.e.,
all limitations of the claim are found in the reference. 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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