Appeal No. 2004-0919 Page 11
Application No. 09/842,607
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. Pat. App. & Int. 1990). In
this case, it is our opinion that the examiner has provided on page 5 of the answer a
basis in fact and/or technical reasoning that reasonably supports the determination that
the allegedly inherent characteristic (i.e., a multi-layer core assembly exhibiting a PGA
compression of less than 85) necessarily flows from the teachings of Saito.
After the examiner 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, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re King, 801
F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986). Hence, appellants' burden
before the United States Patent and Trademark Office (USPTO) is to prove that Saito's
multi-layer core assembly does not exhibit a PGA compression of less than 85. The
appellants have not come forward with any evidence to satisfy that burden. Compare In
re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977); In re Ludtke, 441
F.2d 660, 664, 169 USPQ 563, 566-67 (CCPA 1971).
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