Appeal No. 2004-0314
Application No. 09/965,496
reinsertion of the plug (answer, pages 6-7). The examiner,
however, has not provided evidence that Wewetzer’s cover is
removable by the techniques set forth by the examiner. The mere
possibility or probability that the cover can be removed in the
ways proposed by the examiner is not sufficient for establishing
a prima facie case of inherency. See In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981). Moreover, the term
“removable” in the appellant’s claim 1 is interpreted not in a
vacuum but, rather, in light of the application disclosure and
the prior art. See In re Kroekel, 504 F.2d 1143, 1146, 183 USPQ
610, 612 (CCPA 1974); In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238-39 (CCPA 1971). The appellant’s disclosure indicates
that the cover is freely removable, not removable only after
adhesive is removed or the container or cover is expanded by
being heated, and the examiner has not provided prior art which
shows that one of ordinary skill in the art would have
interpreted “removable” in the context of removing a removable
cover from a food container as including such adhesive removal
and thermal expansion techniques.
For the above reasons we find that the examiner has not
carried the burden of establishing a prima facie case of
anticipation of the appellant’s claimed food container.
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