Appeal No. 2006-0833
Application No. 10/297,832
anticipation. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d at 631-33, 2 USPQ2d
at 1052-54.
However, 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
(F.3d Cir. 1991); Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990).
Inherency, however, can not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not sufficient. Id
at 1269, 20 USPQ2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981).
In the instant case the examiner has not established that the displacement of the
meniscus layer or that a non-zero pressure gradient between the meniscus and the
raceway necessarily occurs in the Akamatsu ‘947 reference. Therefore, the examiner
has not established a prima facie case of anticipation and thus we will not sustain this
rejection.
We will likewise not sustain the examiner’s rejection of claims 4 and 7 under
35 U.S.C. § 102(b) as being anticipated by Akamatsu ‘672. Claims 4 and 7 depend
from claim 1 and thus include the subject matter related to the displacement of the
4
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