Appeal No. 2005-0108
Application No. 10/099,828
35 U.S.C. § 102
A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053
(Fed. Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is encompassed by the claim and
what subject matter is described by the reference. As set forth by the court in Kalman
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983),
cert. denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on'
something disclosed in the reference, i.e., all limitations of the claim are found in the
reference, or 'fully met' by it." While all elements of the claimed invention must appear
in a single reference, additional references may be used to interpret the anticipating
reference and to shed light on its meaning, particularly to those skilled in the art at the
relevant time. See Studiengesellschaft Kohle v. Dart Indus., Inc., 726 F.2d 724, 726-
727, 220 USPQ 841, 842-843 (Fed. Cir. 1984). Here the examiner maintains that
columns 5 and 6 of Burns teach the use of an internet address. (See answer at pages
3-4.) Yet from our review of those specific portions of Burns, we cannot agree with the
examiner. Furthermore, while we do find that Burns suggests the use of the internet at
column 34, lines 50-54, for the downloading of software, we find no express or inherent
teaching of the use for data transmission. Therefore, while we deem it to be an obvious
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