Appeal Number: 2006-1996
Application Number: 10/459,679
1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 U.S. 907
(2003). Express anticipation occurs when the prior art expressly discloses each
limitation (i.e., each element) of a claim. Id. In addition, [i]t is well settled that a
prior art reference may anticipate when the claim limitations not expressly found in
that reference are nonetheless inherent in it at Id. Inherency looks to whether a
matter is necessarily present in the prior art; it may not be established by
probabilities or possibilities. Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378,
1384 (Fed. Cir. 1999). A claimed invention may be inherently anticipated by a
prior art disclosure if the claimed invention necessarily or inevitably flows from
the prior art. See, e.g., Cruciferous Sprout, 301 F.3d at 1349; 64 USPQ2d at 1206;
Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999).
In assessing whether subject matter would have been non-obvious under
§ 103, the Board follows the guidance of the Supreme Court in Graham v. John
Deere Co. Kahn at 985, 78 USPQ2d at 1335. The Board determines “‘the scope
and content of the prior art,’” ascertains “‘the differences between the prior art and
the claims at issue,’” and resolves “‘the level of ordinary skill in the pertinent art.’”
Id. (citing Dann v. Johnston, 425 U.S. 219, 226, 189 USPQ 257, 261 (1976))
(quoting Graham, 383 U.S. at 17, 148 USPQ at 467). Against this background, the
Board determines whether the subject matter would have been obvious to a person
of ordinary skill in the art at the time of the asserted invention. Id. (citing Graham,
383 U.S. at 17, 148 USPQ 467).
ANALYLSIS
With respect to the rejections based on Randolph under either § 102 or §
103, we will not sustain these rejections. In our view it is unreasonable to regard
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