Appeal No. 2000-2009
Application No. 08/832,430
would not have considered any one of a “message,” a “record,” or a “client” to be an
“object.”
In any event, since Grimm does not describe the allegedly anticipatory system in
express terms of object-oriented programming, to anticipate a claim the reference must
disclose an embodiment that inherently meets all the features of the claim. However,
our reviewing court 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.” In re Robertson, 169 F.3d 743, 745, 49
USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (citations omitted).
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). In the instant case, we conclude that the examiner has not
established that Grimm meets all the terms of any of the independent claims 1, 10, and
19.
Whether the subject matter of any of the claims before us could be shown as
having been obvious (35 U.S.C. § 103) in view of the evidence provided by Grimm,
combined with evidence of the ordinary artisan’s knowledge with respect to the tools of
object-oriented programming, is not at issue in the instant appeal. On this record we
conclude that the examiner’s finding of anticipation is based on erroneous claim
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