Appeal No. 2005-0516 Page 12
Application No. 10/199,803
REMAND
This application is remanded to the examiner for consideration of the following
issue. Is claim 1 anticipated2 by the horizontal upper rail 6 of Eisele? In that regard, we
note that claim 1 is directed to a protective guard per se3 and not to the combination of a
protective guard secured over the top support bar of a fence as set forth in claim 20. In
making this determination, the examiner must ascertain whether or not the horizontal
upper rail 6 of Eisele is capable of being secured over a top support bar of a fence so
that Eisele's flanges 20 would engage opposite sides of the fence when the horizontal
upper rail 6 is secured atop the top support bar of a fence.
CONCLUSION
2A 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."
3In this regard we note the use of "intended use" language in claim 1 (e.g.,
securable over, adapted for).
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