Appeal No. 1997-4292 Page 13
Application No. 08/515,344
steel 316L, gold, tantalum, etc. which enables it to be
plastically deformed from its constricted diameter to its
expanded diameter. In our view, this basis in fact and/or
technical reasoning is sufficient to reasonably support the
determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art.
See Ex parte Levy, supra.
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). 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
1977); In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566-67
(CCPA 1971). In that regard, the appellant's mere argument on
page 3 of the brief that Pinchasik lacks the claimed "bridge"
which causes a cell to have a finite expansion limit in one
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