Appeal No. 2006-3231
Application No. 09/955,691
Claims 2-3 and 11-12 stand rejected under 35 U.S.C. 103(a) as being unpatentable over
Thomas in view of Lu. Claim 30 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Thomas in view of Lert, Jr.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and the
Appellants regarding the above-noted rejections, we make reference to the Examiner's
Answer (mailed Jun. 2, 2006) for the reasoning in support of the rejection, and to
Appellants’ Brief (filed Mar. 16, 2006) and Reply Brief (filed Aug. 7, 2006) for the
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
Appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by Appellants and the Examiner. As a consequence of
our review, we make the determinations that follow.
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 v. Dart Indus Inc., 726 F.2d 724, 726-727,
220 USPQ 841, 842-843 (Fed. Cir. 1984).
We must point out, however, that anticipation under 35 U.S.C. § 102 is
established only when a single prior art reference discloses, either expressly or under the
principles of inherency, each and every element of a claimed invention. See RCA Corp.
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