Appeal No. 2006-1245 Page 10
Application No. 10/294,106
In response, Appellants only argue that none of the references teaches the
claimed methods. Brief, pages 19-24. Appellants do not offer any rationale for this
conclusion, for example, by providing a factual basis as to why the examiner’s holding
of inherency is incorrect.
"To anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently." In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Thus, “a prior art reference may anticipate
when the claim limitation or limitations not expressly found in that reference are
nonetheless inherent in it.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51
USPQ2d 1943, 1946 (Fed. Cir. 1999). One of ordinary skill viewing the reference need
not recognize the inherent properties disclosed by the reference. Id., at 1347, 51
USPQ2d at 1947. (“Inherency is not necessarily coterminous with the knowledge of
those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent
characteristics or functioning of the prior art.”) (citations omitted).
To establish that a reference inherently discloses a specific limitation, the
examiner may refer to extrinsic evidence demonstrating that the descriptive matter
missing from the reference is necessarily present in the reference’s disclosure.
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749
(Fed. Cir. 1991). (“To serve as an anticipation when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be filled with recourse to
extrinsic evidence. Such evidence must make clear that the missing descriptive matter
is necessarily present in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill.”). Thus, the examiner cannot establish
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