Appeal 2007-0672
Application 10/399,702
examiner might desire. If the scope of the invention sought to be patented
cannot be determined from the language of the claims with a reasonable
degree of certainty, a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is appropriate.
Thus, the failure to provide explicit antecedent basis for terms does
not always render a claim indefinite. As stated above, if the scope of a claim
would be reasonably ascertainable by those skilled in the art, then the claim
is not indefinite. See Ex parte Porter, 25 USPQ2d 1144, 1145 (Bd. Pat.
App. & Inter. 1992).
Anticipation
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.), cert. denied, 484 U.S. 827 (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), cert. denied, 465 U.S. 1026 (1984), 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.”
It is well settled that apparatus claims must distinguish over prior art
apparatus by the structure defined by the claims, and not by a process or
function performed by the apparatus. A prior art apparatus having the same
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