Appeal No. 2000-0447
Application No. 08/838,685
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 Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed Cir.
1991); Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int.
1990).
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). Gore discloses a intravascular catheter which has a
proximal section which has a softness of 75A shore. The
appellants’ catheter has a distal section with a softness
between 55A and 75A shore. Gore discloses a midsection with a
softness of 65A shore. The appellants’ midsection has a softness
between 65A and 85A shore. Gore’s distal end has a softness of 80A
shore. Appellants disclose a distal end with a softness between
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