Appeal No. 2000-0305 Page 9
Application No. 08/887,453
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When relying upon
the theory of inherency, the PTO 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).
After the PTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to the
appellant to prove that the subject matter shown to be in the
prior art does not possess the characteristics of the claimed
invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964,
966 (Fed. Cir. 1985); In re King, 801 F.2d 1324, 1327, 231
USPQ 136, 138 (Fed. Cir. 1986).
In this case, the basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of Andersen is his teaching that cover 10 is made of
a stretchable flexible material which can be stretched up,
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007