Trilateral Project 24.1-Biotechnology 147

Lack of novelty is also known as anticipation. A single prior art reference anticipates a claimed invention only if it discloses each and every claim element. Structural Rubber Prod. Co. v. Park Rubber Co., 749 F.2d 707, 716, 223 USPQ 1264 , 1271 (Fed. Cir. 1984). Anticipation is not shown even if the differences between the claims and the prior art reference are "insubstantial" and the missing elements could be supplied by the knowledge of one skilled in the art. Id. The discovery of a new property or use of a previously known composition, even when the property and use are unobvious from the prior art, cannot impart patentability to claims to the known composition. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). In order to anticipate, a prior art reference must be enabling, thus placing the allegedly disclosed matter in the possession of the public.

Under the USPTO practice, a difference in purpose or objective between a reference and the claimed invention would not negate anticipation if each and every element of the claimed invention is disclosed in the prior art reference. The U.S. Examiner, in evaluating the limitations in the claim, does not generally read limitations into a claim that are not recited in the claim and certainly not an intended use or object of the intention that has been disclosed in the specification. An unclaimed limitation will not avoid anticipation.