Appeal No. 98-2150
Application No. 08/539,926
As to the appellant's contention that Szymczak does not have a
"separate" reference surface, there is simply no limitation in
representative claim 1 which would preclude Szymczak's
arrangement wherein the reference surface is a continuous
extension of the secondary sealing surface.4
In view of the foregoing, we will sustain the rejection
of claims 1, 17 and 22 under 35 U.S.C. § 102(b) as being
anticipated by Szymczak.
Turning to the rejection of claim 8 under 35 U.S.C. §
102(b) as being anticipated by Szymczak, the examiner has the
initial burden of establishing 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, 1463-64 (Bd. Pat. App. & Int. 1990).
Here, we do not find the examiner has discharged that initial
burden.
The answer states that
4It is well settled that features not claimed may not be
relied upon in support of patentability. In re Self, 671 F.2d
1344, 1348, 213 USPQ 1, 5 (CCPA 1982).
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