Appeal 2007-1650
Application 11/111,799
Both anticipation under 35 U.S.C. § 102 and obviousness under § 103
are two-step inquiries, in which the first step is a proper construction of the
claims and the second step requires a comparison of the properly construed
claim to the prior art. Medichem S.A. v. Rolabo S.L., 353 F.3d 928, 933, 69
USPQ2d 1283, 1286 (Fed. Cir. 2003).
It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
Our reviewing court states in In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989) that “claims must be interpreted as
broadly as their terms reasonably allow.” Our reviewing court further states
that "the words of a claim 'are generally given their ordinary and customary
meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312, 75 USPQ2d 1321,
1326 (Fed. Cir. 2005) (en banc) (internal citations omitted). The "ordinary
and customary meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art in question at the time of the
invention, i.e., as of the effective filing date of the patent application." Id. at
1313, 75 USPQ2d at 1326.
To serve as anticipation when the reference is silent about the asserted
inherent characteristic, such gap in the reference may be filled with recourse
to extrinsic evidence. Such evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
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