Appeal No. 2002-1479 Page 5
Application No. 08/794,042
The prior art reference need not expressly disclose every claim limitation;
a claim is also anticipated if the disclosed product or process would have
inherently met the limitations of the claim. See, e.g., Verdegaal Bros., Inc. v.
Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (“A
claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.”).
Moreover, “[a]n inherent structure, composition or function is not
necessarily known. . . . Insufficient prior understanding of the inherent properties
of a known composition does not defeat a finding of anticipation.” Atlas Powder
Co. v. IRECO Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1947 (Fed. Cir.
1999). “[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of showing
that they are not.” In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990).
However, “the examiner must provide some evidence or scientific
reasoning to establish the reasonableness of the examiner’s belief that the
functional limitation is an inherent characteristic of the prior art” before the burden
is shifted to an applicant to disprove the inherency. Ex parte Skinner, 2 USPQ2d
1788, 1789 (Bd. Pat. App. Int. 1986). And to sustain the rejection, since
patentability is determined based on a preponderance-of-the-evidence standard,
the evidence must show that the prior art product more likely than not is the
same as the claimed product. See, e.g., In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992) (“After evidence or argument is submitted
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