Appeal No. 2006-3076 Page 4
Application No. 10/004,948
35 U.S.C. § 102
A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference. Verdegaal
Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
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 reference, i.e., all limitations of the claim are found in the
reference, or 'fully met' by it." While all elements of the claimed invention must appear
in a single reference, additional references may be used to interpret the anticipating
reference and to shed light on its meaning, particularly to those skilled in the art at the
relevant time. See Studiengesellschaft Kohle, m.b.H. v. Dart Indus., Inc., 726 F.2d 724,
726-727, 220 USPQ 841, 842-843 (Fed. Cir. 1984).
Initially we note that anticipation by a prior art reference does not require either
the inventive concept of the claimed subject matter or the recognition of 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. 1987). A prior art
reference anticipates the subject of a claim when the reference discloses every feature of
the claimed invention, either explicitly or inherently (see Hazani v. Int'l Trade Comm'n,
126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997) and RCA Corp. v.
Applied Digital Data Sys., 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 are claiming, but only that the claims on appeal "read on" something
disclosed in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218
USPQ 781, 789 (Fed. Cir. 1983).
With respect to anticipation, Appellants argue that O’Sullivan does not receive the
requirements for an “entire” computer network and that O’Sullivan does not show
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