Appeal 2007-1309
Application 10/873,241
PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
"It is well settled that a prior art reference may anticipate when the claim
limitations not expressly found in that reference are nonetheless inherent in it.
Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates." In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir.
2002) (citations and internal quotation marks omitted). "Inherency, however, may
not be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).
Once a prima facie case of anticipation has been established, the burden
shifts to the Appellant to prove that the prior art product does not necessarily or
inherently possess the characteristics of the claimed product. In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) ("Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product."). See also In re Spada, 911 F.2d 705,
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