Appeal No. 2005-2168 Παγε 4
Application No. 10/122,616
Appellant argues that JP’575 does not describe an interaction between the
ionization electrode and the stream itself.
It is true that JP'575 does not expressly disclose that the air stream is ionized.
However, a prior art reference need not expressly disclose each claimed element in
order to anticipate the claimed invention. See Tyler Refrigeration v. Kysor Indus. Corp.,
777 F.2d 687, 689, 227 USPQ 845, 846-847 (Fed. Cir. 1985). Rather, 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 Patent and Trademark Office (PTO). 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 Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991); Ex
parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990).
After the PTO 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
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