Appeal No. 2005-2151
Application No. 09/822,473
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
Only those arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants could have made but chose not to make in the brief
have not been considered. We deem such arguments to be waived by Appellants [see
37 CFR § 41.37(c)(1)(vii) effective September 13, 2004 replacing 37 CFR
§ 1.192(a)]. From our review of appellants’ brief, we find that appellants have included
headings for claims 1 and 3 as a grouping and claim 2 as a separate grouping.
35 U.S.C. § 102
Initially we note that anticipation by a prior art reference does not require either
the inventive concept of the claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference. See Verdegaal Bros. Inc.
v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied,
484 U.S. 827 (1987). A prior art reference anticipates the subject of a claim when the
reference discloses every feature of the claimed invention, either explicitly or inherently
(see Hazani v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361
(Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
3
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