Appeal No. 1999-0404 Page 15
Application No. 08/580,256
each claimed element in order to anticipate the claimed
invention. Rather, if a claimed element is inherent in a prior
art reference, then that element is disclosed for purposes of
finding anticipation. See Verdegaal Bros., Inc. v. Union Oil
Co., 814 F.2d at 631-33, 2 USPQ2d at 1052-54.
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 Patent and Trademark Office (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).
In this case, the allegedly inherent characteristic does
necessarily flow from the teachings of Chiang for the
following reasons. Chiang's disclosed angles for the rib
helix angle and the angle of incidence between the notches and
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007