Appeal 2006-2334
Application 09/909,913
rubbery or otherwise unacceptable when compared to a product which has
not been” so subjected,” and any method can be used which applies pressure
in this manner (id., col. 4, ll. 19-54 and col. 5, ll. 10-25). Margolis
exemplifies applying pressure in “a rolling manner . . . by rolling a pressure-
applying device across the surface of the heated (cooked) patty . . . such as a
rolling pin . . . applied in only a relatively narrow band across the surface of
the patty,” and applying “uniform pressure to the entire surface of the heated
patty by means such as a pressure plate” wherein the heated patty can be on
an inclined surface which can be perforated (id., col. 4, l. 52 to col. 5, l. 9,
col. 5, ll. 26-42, and Example 1, col. 7, ll. 11-53).
A discussion of the remaining applied references is not necessary to
our decision.
Considering first the ground of rejection under § 102(b) over
Peterson, it is well settled that the Examiner has the burden of making out a
prima facie case of anticipation in the first instance by pointing out where
each and every element of the claimed invention, arranged as required by the
claim, is described identically in the reference, either expressly or under the
principles of inherency, in a manner sufficient to have placed a person of
ordinary skill in the art in possession thereof. See In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). It is also well settled
that in order to establish that a claim element is inherent in the single prior
art reference, it must be established by evidence that such limitation is
necessarily present in the description in the reference and that it would be
recognized as such by one of ordinary skill in the art, as “[t]he mere fact that
a certain thing may result from a given set of circumstances is not sufficient.
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