Appeal No. 2005-1119
Application No. 10/074,665
Shore D hardness of “no more than 55"). Therefore appellants’
argument is not persuasive since an example of Nesbitt falls
within the scope of claim 46 on appeal. See In re May, 574 F.2d
1082, 1089, 197 USPQ 601, 607 (CCPA 1978).
Appellants argue that Nesbitt does not disclose or claim a
spin factor at all (Brief, page 5). Appellants argue that the
burden is on the examiner to 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 prior art (id.). Finally, appellants argue that
in order for a reference to anticipate every element of the
claims must be “literally” present in the reference (id.).
Appellants’ arguments are not persuasive. We note that
appellants are incorrect in arguing that every element of the
claims must be literally present in a reference to have
anticipation. Under section 102(b), anticipation requires that
the prior art reference disclose, either expressly or under the
principles of inherency, every limitation of the claim. See In
re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986).
In this appeal, we note that the “spin factor” is derived from a
complex set of measurements and calculations using many different
golf clubs (see the specification, pages 45-46). This “spin
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