Ex Parte Kelley et al - Page 6



           Appeal No. 2006-1707                                                                     
           Application No. 09/964,029                                                               
           invention.  In fact, the disputed features are broad enough such                         
           that, to the extent claimed, the reference is sufficiently                               
           enabling and places the disclosed matter in the possession of the                        
           public.  See Akzo N.V. v. United States Int’l Trade Comm’n, 808                          
           F. 2d 1471, 1479, 1 USPQ2d 1241 , 1245 ( Fed. Cir. 1986).                                
                 Turning now to the 35 U.S.C. § 102 rejection of claim 6, we note that              
           a rejection for anticipation requires that the four corners of a                         
           single prior art document describe every element of the claimed                          
           invention, either expressly or inherently, such that a person of                         
           ordinary skill in the art could practice the invention without                           
           undue experimentation.  See Atlas Powder Co. v. Ireco Inc., 190                          
           F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999); In re                            
           Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir.                          
           1994).  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), it is only necessary for the claims to “‘read on’                            
           something disclosed in the prior art reference, i.e., all                                
           limitations of the claim are found in the reference, or ‘fully                           
           met’ by it.”  See also Atlas Powder Co. v. IRECO Inc., 190 F.3d                          

                                                 6                                                  




Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007