Appeal No. 2005-1180
Application No. 09/791,298
compartment." See Brief, p. 12.
"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). In this case, Peiker does not expressly describe that the first compartment of the
disclosed carton is insulating. However, Peiker discloses that the carton is constructed of
paperboard. See col. 1, lines 36-38. Therefore, as pointed out by the examiner, the first
compartment inherently provides some degree of conductive insulation. See Answer, p. 4.
Appellants do not dispute that paperboard inherently has insulating properties. In fact,
appellants recognize that paperboard is an insulator. See Specification, p. 1, line 29 - p. 2, line
3. Nevertheless, appellants argue that one of ordinary skill in the art would not have expected
the first compartment of Peiker to be insulating because the top wall of the compartment has
large holes which allow heat to escape. Appellants maintain that the insulating compartment, as
claimed, does not have holes in the top wall as in Peiker. See Brief, p. 13; Reply Brief, pp. 1-2.
Significantly, claim 1 does not expressly exclude a compartment having holes in a top
wall as in Peiker, and appellants have failed to establish that an "insulating first compartment"
is inherently devoid of holes. See E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.,
849 F.2d 1430, 1433, 7 USPQ2d 1129, 1131 (Fed. Cir.), cert. denied, 488 U.S. 986 (1988)
(limitations appearing in the specification will not be read into the claims); cf. Kooi v. DeWitt,
546 F.2d 403, 409, 192 USPQ 268, 273 (CCPA 1976) (for doctrine of inherency to provide
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