Appeal No. 2004-1072 Page 7
Application No. 09/868,150
'fully met' by it." 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 United 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 establishes a prima facie case of anticipation based on
inherency, the burden shifts to the appellant 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).
In our view, the examiner has not clearly set forth a prima facie case of
anticipation based on inherency. In that regard, the examiner has not distinctly provided
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