Appeal No. 2006-3034 Page 5
Application No. 09/855,115
Independent claims 1 and 6
We consider first the examiner’s rejection of independent claims 1 and
6 as being anticipated by Dieterich.
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, 1375-76, 77 USPQ2d 1321, 1325-26 (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. USA, Inc. 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 claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007