Appeal No. 2004-0681
Application No. 09/899,743
anticipation is established when a single prior art reference
discloses, expressly or under principles of inherency, each and
every element of the claimed invention. RCA Corp. v. Applied
Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir. 1984). Here, the examiner has advanced a factual and
technical basis in support of his position that Dixit’s plasma
exposure would necessarily and inherently convert the pore
surfaces of his xerogels from hydrophobic to hydrophilic as
required by step(b) of appealed independent claim 6. In
response, the appellants have not even acknowledged much less
contested the examiner’s basis for his inherency position.
It is the examiner’s initial burden to establish a prima
facie basis for denying patentability, and, if relying upon a
theory of inherency, the examiner must provide a basis in fact
and/or technical reasoning to reasonably support a determination
that the allegedly inherent characteristic necessarily flows from
the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d
1461, 1463-64 (Bd. Pat. App. & Int. 1990). In the appeal under
consideration, the basis for the examiner’s inherency position is
not without merit. More importantly, the appellants have not in
any way challenged this basis including the factual and technical
accuracy thereof. We are compelled by these circumstances to
6
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