Appeal No. 2006-1576 6
Application No. 10/223,170
Moreover, although it is true that anticipation under
35 U.S.C. 102(b) is established only when a single prior art
reference discloses, either expressly or under principles of
inherency, each and every element or limitation of a claimed
invention, we observe that the law of anticipation does not require
that the reference teach what the appellant has disclosed but only
that the claims on appeal "read on" something disclosed in the
reference, i.e., all limitations of the claim are found in the
reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218
USPQ 871 (Fed. Cir. 1983).
In this case, while it is clear that there is nothing in
Urbanosky which expressly indicates that the progressively expanded
multi-layered packing element therein will function in the
particular manner set forth in appellant's claim 1, we find that
claim 1 “reads on” the packer of Urbanosky and, given the
arrangement and relative material characteristics of the layers
shown therein and the high level of compression used with such
packers, that the softer second material (60) in Urbanosky will
necessarily function in the manner required in claim 1 on appeal
and thus be movable in a direction other than radially toward the
tubular casing to fill a void created between the first material
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007