Appeal No. 96-3949
Application No. 08/230,383
facie case of anticipation. 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
USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990).
As discussed previously, the Examiner relies on the
description in Okude of the iterative procedure of achieving
placement optimization by starting with an initial placement
and continually evaluating pairwise interchanges of elements.
The Examiner contends that a list of cell transpositions would
be stored in Okude to enable the simultaneous processing of
placement interchanges. However, we are in agreement with
Appellants that there is no teaching or suggestion of the
storing of transposition lists in Okude. More importantly,
assuming, arguendo, that the storing of transposition lists is
inherently taught in Okude, the claims would not be met since
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