Appeal 2007-1015
Application 10/011,088
it is improper to reject the pending claims based on the elastic
threads or ribbons of Widlund forming both the biaxially
extensible outer cover and the bodyside liner and also
simultaneously being captured between the biaxially extensible
outer cover and the biaxially extensible bodyside liner.
Br. 8.
Hence, a dispositive issue raised by Appellants with regard to the
Examiner’s anticipation rejection is: Has the Examiner established, prima
facie, that Widlund describes an article that includes features that correspond
to all of the limitations respecting the outer cover, bodyside liner, and the
first and second leg elastic members, as required by all of the rejected
claims? We answer this question in the negative for the reasons set forth in
Appellants’ Brief, as reproduced above, and for the reasons set forth in the
Reply Brief (Reply Br. 2-3).
“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, anticipation by a prior art reference
does not require that the reference recognize either the inventive concept of
the claimed subject matter or the 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.), cert. denied, 484 U.S.
827 (1987).
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).
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