Appeal No. 2002-1492 Page 4
Application No. 09/352,161
(CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667
(CCPA 1939)) (internal citations omitted):
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. If, however, the disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure should be
regarded as sufficient.
Thus, a prior art reference may anticipate when the claim limitation or limitations not
expressly found in that reference are nonetheless inherent in it. See In re Oelrich, 666
F.2d at 581, 212 USPQ at 326; Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
630, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Under the principles of inherency, if the
prior art necessarily functions in accordance with, or includes, the claimed limitations, it
anticipates. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986).
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
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990). After the USPTO
establishes a prima facie case of anticipation based on inherency, the burden shifts to
the appellants 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,
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