Appeal No. 2004-2347 Page 4
Application No. 09/839,519
(1)
Independent claim 1 and dependent claims 3-7 stand rejected as being
anticipated by Hardy. Anticipation under 35 U.S.C. § 102(b) 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. 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).
Evaluating the rejection in the light of this guidance from our reviewing court
leads us to conclude that it should be sustained. Our reasoning follows.
Hardy is directed to a portable tool storage apparatus capable of being installed
across the top of a step ladder (Figures 5 and 6) or an extension ladder (Figures 3 and
4). The only argument set out by the appellants in opposition to this rejection is that
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