Appeal No. 97-2418 Page 8
Application No. 08/390,843
1 in that the Examiner took the position that he interpreted
the claim as being drawn to a diverter valve and gave no
weight to the recitations of two phase mixed steam flow, (2)
without extensive testing the appellants have no way of
determining the Examiner's assumption that the diverter valve
of Bachmann would be useful in any sense in a two phase steam
flow line, and (3) at no point does Bachmann even discuss two
phase, single phase or any steam flow, much less a means for
controlling movement of two phase steam as called for in claim
1.
We conclude that the examiner has established a prima
facie case of anticipation. When relying upon the theory of2
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
2It 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).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007