Appeal No. 2006-2982 Page 5
Application No. 10/458,112
It is our view, after consideration of the record before us, that the
evidence relied upon by the examiner does not support the examiner’s
rejections of claims 1-17, 22-28 and 38, but does support the examiner’s
rejections of claims 18-20, 29 and 30. Accordingly, we affirm-in-part.
ANTICIPATION REJECTIONS
In rejecting claims under 35 U.S.C. §102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-6, 77 USPQ2d 1321, 1325-6 (Fed. Cir. 2005),
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). To establish
inherency, the extrinsic evidence “must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d
1746, 1749 (Fed. Cir. 1991). “Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (internal citations
omitted). To anticipate, every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
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