Appeal Number: 2006-0921
Application Number: 10/083,079
The examiner is correct that the 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.
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 (F3d. 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 USPQ2s at 1749
(quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).
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