Ex Parte Roesner et al - Page 6



             Appeal 2007-1671                                                                                   
             Application 10/374,837                                                                             
                                           PRINCIPLES OF LAW                                                    
                   “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. v. Union Oil Co. of California, 814 F.2d 628, 631,                    
             2 USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).                           
             Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 102                 
             begins with a determination of the scope of the claim.  We determine the scope of                  
             the claims in patent applications not solely on the basis of the claim language,                   
             but upon giving claims their broadest reasonable construction in light of the                      
             specification as it would be interpreted by one of ordinary skill in the art.  In re               
             Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed.                      
             Cir. 2004).  The properly interpreted claim must then be compared with the prior                   
             art.                                                                                               
                   “It 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.                  
             Under the principles of inherency, if the prior art necessarily functions in                       
             accordance with, or includes, the claimed limitations, it anticipates.”  In re                     
             Cruciferous Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir.                    
             2002) (citations and internal quotation marks omitted).  "Inherency, however, may                  
             not be established by probabilities or possibilities.  The mere fact that a certain                
             thing may result from a given set of circumstances is not sufficient."  In re                      
             Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999) (citations                     
             and internal quotation marks omitted).                                                             

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