Appeal No. 97-0766 Page 7
Application No. 08/287,448
Gebhardt's resilient damping layer 3 is inherently formed in
the gap (i.e., clearance) established between his machine
elements is without support. While Gebhardt need not
expressly disclose each claimed element/step 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)), 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
USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990). This the
examiner has not done.
For the reasons set forth above, the decision of the
examiner to reject claims 13 through 15 under 35 U.S.C. §
102(b) is reversed. In addition, the decision of the examiner
to reject dependent claim 16 under 35 U.S.C. § 103 is reversed
since the limitations of parent claim 13 are not suggested or
taught by the applied prior art.
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