Appeal 2007-0486
Application 10/441,484
Claims 11-13 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Eng. Claims 11-13 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Hoffman. Claims 11, 12 and 14 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Ruddy. Claim 14 stands rejected
under 35 U.S.C. § 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
Applicants regards as the invention.
We affirm the anticipation rejections over Eng and Hoffman as to
claims 11 and 12 only. We reverse the anticipation rejection over Ruddy.
and we reverse the § 112, second paragraph rejection.
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997);
accord Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047, 34 USPQ2d
1565, 1567 (Fed. Cir. 1995). 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).
Anticipation under this section is a factual determination. See In re
Baxter Travenol Labs., 952 F.2d 388, 390, 21 USPQ2d 1281, 1283 (Fed.
Cir. 1991) (citing In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567
(Fed. Cir. 1990).
In the present case, the Examiner has determined that appealed claims
11-13 read on the subject matter described by Eng or Hoffman, and that
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