Appeal No. 2002-2208 Page 5
Application No. 09/543,989
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
USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990).
The plank member of Figure 14 or Figure 15 of Pollock is made of PVC, the
same material as appellant’s extrusion, and comprises a series of interconnected long
and narrow horizontal and vertical members, akin to that of appellant, as illustrated in
Figure 4. In light of these structural similarities to appellant’s extrusion, Pollock’s
disclosure is sufficient to reasonably support the examiner’s determination that
Pollock’s plank member possesses the requisite resiliency to meet the limitations
recited in the last paragraph of claim 252 so as to establish a prima facie case of
anticipation and thereby shift the burden to appellant to prove that Pollock’s plank
member does not possess such resiliency.3 Appellant has not come forward with any
evidence to satisfy that burden. Compare In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433-34 (CCPA 1977); In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566-67
(CCPA 1971). Appellant's mere argument on page 4 of the brief that, because Pollock
2 We understand the last paragraph of claim 25 to call for the extrusion, by virtue of both the
material from which it is made and its structure, to be sufficiently resilient to be capable of bending
outwardly and upwardly as recited therein and snapping inwardly and downwardly to interlock with a snap
connector in the manner recited therein.
3 After the PTO establishes a prima facie case of anticipation based on inherency, the burden
shifts to the appellant to prove that the subject matter shown to be in the prior art does not possess the
characteristics of the claimed invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed.
Cir. 1985); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986).
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