Appeal No. 2004-0058
Application No. 09/728,518
permit as set forth in independent claim 3, or (2) the step of starting the engine at an
engine speed below a resonance speed of a drivetrain of the vehicle as recited in
independent claim 8. We agree. We do not agree with the examiner (see pages 3-8 of
the answer) that these two limitations are inherently met by Field.
A prior art reference need not expressly disclose each claimed element in order
to anticipate the claimed invention. See Tyler Refrigeration v. Kysor Indus. Corp., 777
F.2d 687, 689, 227 USPQ 845, 846-847 (Fed. Cir. 1985). Rather, if a claimed element
(or elements) is inherent in a prior art reference, then that element (or elements) is
disclosed for purposes of finding anticipation. See Verdegaal Bros., Inc. v. Union Oil
Co., 814 F.2d at 631-33, 2 USPQ2d at 1052-54.
It is well settled that the burden of establishing a prima facie case of anticipation
resides with the Patent and Trademark Office (PTO). 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). When a reference is silent about
an asserted inherent characteristic, it must be clear that the missing descriptive matter
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