Appeal No. 2006-0783
Application No. 10/396,164
DISCUSSION
We have carefully reviewed the claims, specification and applied prior art,
including all of the arguments advanced by both the Examiner and Appellants in support
of their respective positions. This review leads us to conclude that that the Examiner’s
rejection is well founded. Our reasons appear below.
The § 102 rejection
Anticipation by a prior art reference does not require that the reference recognize
either the inventive concept of the claimed subject matter or the 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.1987). A prior art reference
anticipates the subject matter of a claim when the reference discloses every feature of the
claimed invention, either explicitly or inherently (see Hazani v. U.S. 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 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984)).
However, the law of anticipation does not require that the reference teach what the
appellants teach in their specification, but only that the claims on appeal “read on”
something disclosed in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983)).
-3-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007