Appeal 2007-2488
Application 10/081,483
1 IV. Legal principles
2 We read the claims in view of the Specification. A limitation may not
3 be read into a claim from the Specification, but it is appropriate to look to
4 the Specification to define a limitation already in the claim. Elekta Instr.
5 S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307, 54 USPQ2d 1910, 1913
6 (Fed. Cir. 2000).
7 35 U.S.C. § 102
8 “A person shall be entitled to a patent unless …..the invention was
9 patented or described in a printed publication in this or a foreign country or
10 in public use or on sale in this country, more than one year prior to the date
11 of the application for patent in the United States” 35 U.S.C. § 102(b).
12 To anticipate a claim, a prior art reference must disclose every
13 limitation of the claimed invention, either expressly or inherently.
14 Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053
15 (Fed. Cir. 1987).
16 "To establish inherency, the extrinsic evidence 'must make clear that
17 the missing descriptive matter is necessarily present in the thing described in
18 the reference, and that it would be so recognized by persons of ordinary
19 skill.' 'Inherency, however, may not be established by probabilities or
20 possibilities. The mere fact that a certain thing may result from a given set of
21 circumstances is not sufficient.'" In re Robertson, 169 F.3d 743, 745, 49
22 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (citations omitted). “[A]fter the
23 PTO establishes a prima facie case of anticipation based on inherency, the
24 burden shifts to appellant to 'prove that the subject matter shown to be in the
13
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