Appeal No. 1999-0291
Application No. 08/646,077
misregister -- and in our view does not disclose or suggest any requirement that the
difference in speed of the printing plate and the speed of the press be determined.
The rejection does not offer any extrinsic evidence (e.g., additional references) in
support of the interpretation of Palmatier that is in controversy. Our reviewing court,
however, has set out clear standards for establishing inherency.
To establish inherency, the extrinsic evidence "must make clear that the
missing descriptive matter is necessarily present in the thing described in
the reference, and that it would be so recognized by persons of ordinary
skill." "Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)
(citations omitted). The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. § § 102 and 103. In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d
1011, 1016, 154 USPQ 173, 177 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the examiner. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Since the factual basis for the
rejection of independent claims 1 and 11 is lacking, we conclude that the initial burden has
not been met, and cannot sustain the rejection.
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