Appeal 2006-2307
Application 10/370,686
matter would have been anticipated by and/or obvious to one of ordinary
skill in the art in view of the applied prior art as set forth in the Examiner’s
rejections. Accordingly, we sustain the Examiner’s anticipation and
obviousness rejections for essentially the reasons expressed in the Answer.
We add the following for emphasis.
§ 102(b)/§103(a) Rejection of Claims 1-23 over JP05-271645
Appellant does not argue all of the rejected claims separately. Rather,
Appellant refers to claims 11 and 20 as a group in the arguments.2 Thus, we
select claim 20 as representative of the rejected claims in deciding the appeal
as to this ground of 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.), cert. denied, 484 U.S. 827 (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.,
2 While Appellant makes a passing reference to claims 12 and 23 in the
arguments set forth in the Brief, Appellant argues for the patentability of the
latter claims based on the same arguments made for all of the other rejected
claims (Brief 5).
3
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