Appeal No. 2002-1924 Page 11
Application No. 09/102,342
The appellants have not specifically contested this determination of inherency
made by the examiner. Instead, the appellants point out (brief, p. 15) that not all high
acid ionomers have a Shore D hardness of at least 65 citing Iotek 960 as but one
example. As such, the appellants conclude that the claimed Shore D hardness of at
least 65 is not inherent in the golf covers disclosed by Horiuchi.
We find this argument unpersuasive. A prior art reference need not expressly
disclose each claimed element in order to anticipate the claimed invention. See Tyler
Refrigeration v. Kysor Indus. Corp., 777 F.2d 687, 689, 227 USPQ 845, 846-847 (Fed.
Cir. 1985). Rather, if a claimed element (or elements) is inherent in a prior art
reference, then that element (or elements) is disclosed for purposes of finding
anticipation. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d at 631-33, 2
USPQ2d at 1052-54.
It is well settled that the burden of establishing a prima facie case of anticipation
resides with the Patent and Trademark Office (PTO). See In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When relying upon the theory of
inherency, the examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art. See Ex parte Levy, 17
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