Appeal No. 2001-1461
Application 08/921,130
Claims 5 and 123 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gardner.
We refer to the final rejection (Paper No. 7) (pages
referred to as "FR__") and the examiner's answer (Paper No. 12)
(pages referred to as "EA__") for a statement of the examiner's
rejection, and to the brief (Paper No. 11) (pages referred to as
"Br__") and reply brief (Paper No. 13) (pages referred to as
"RBr__") for a statement of appellants' arguments thereagainst.
OPINION
"Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention." RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). Inherency requires that a
characteristic or property necessarily be in the prior art
reference. See In re Rijckaert, 9 F.3d 1531, 1534,
28 USPQ2d 1955, 1957 (Fed. Cir. 1993) ("The mere fact that a
certain thing may result from a given set of circumstances is not
sufficient [to establish inherency])." The initial burden of
establishing a prima facie case of inherency by evidence or
persuasive reasoning is on the examiner. See In re Schreiber,
128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).
3 See footnote 2.
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