Appeal No. 1998-3410
Application No. 08/444,062
It is well established that the prior art reference need not expressly disclose each
claimed element in order to anticipate the claimed invention. See Tyler Refrigeration v.
Kysor Indus. Corp., 777 F.2d 687, 689, 227 USPQ 845, 846-847 (Fed. Cir. 1985).
Rather, if a claimed element (or elements) is inherent in a prior art reference, then that
element (or elements) 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 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).
Here, the examiner's statement that the reference “clearly suggests . . .” does not
rise to the level of inherency. Furthermore, the claimed automatic mode switching
does not necessarily flow from the teachings of Paradise. The examiner goes further to
maintain that “the means for detecting an end of the computer data printing process reads
on the function of the queue management system to detect the end of a printing job in order
to automatically return[s] to the fax release mode giving priority to the fax jobs (columns 5
5
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