Appeal 2006-1127
Application 10/712,970
Norman does not teach that his valve 82
blocks water flow, contrary to the examiner's
condition that such a third blocking position is
inherent because he states that the valve 82 can be
stopped between the only two positions Norman
teaches. A position between those shown in
Norman's FIGS. 3A and 3B is not taught by
Norman, and there is no teaching that when in such
an ”in between” position the valve would block the
first and second liquids [Reply Br. 2].
Appellants further argue that “the seals 86 function only to prevent leakage
upwardly and downwardly away from the valve as the device is depicted in
FIG. 3” and that “[w]ater ends up in the nozzle 104 regardless of whether the
water flows through the valve or around the valve” (id.).
If a prior art device inherently possesses the capability of functioning
in the manner claimed, anticipation exists regardless of whether there was
recognition that it could be used to perform the claimed function. In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir.
1997). 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).
We are unpersuaded by Appellants’ argument that Norman’s valve 82
would not block the path of the second liquid [water] when rotated to a
position between the cleaning mode and the rinsing mode. We observe that
Appellants do not contest that Norman’s valve 82 can rotate at least 180
degrees between the cleaning mode (Figure 3A) and the rinsing mode
(Figure 3B). Appellants primarily argue that “[t]here is no teaching in
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