Appeal No. 2000-1474 Page 13
Application No. 08/962,902
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).
After the USPTO 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). Hence, in view of our
determinations above, the appellant's burden before the USPTO
is to prove that Mueller's scooter does not perform the
functions defined in claim 1. The appellant has not come
forward with any evidence to satisfy that burden. Compare In
re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
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