Appeal No. 2003-0468 Page 6
Application No. 09/447,752
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). As the
court stated in In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA
1981)(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA
1939)):
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. [Citations omitted.] 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.
It is well settled that the burden of establishing a prima facie case of anticipation
resides with the Unites States Patent and Trademark Office (USPTO). 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 Ex parte
Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990).
After the USPTO properly 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
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