Appeal 2006-2352
Application 10/065,436
have Appellants established that the Examiner erred in failing to establish
that Hirakawa describes or suggests all the limitations of either claim 2 or
claim 72?
We answer these questions in the affirmative for each statutory basis
for rejection. Consequently, we reverse the Examiner’s anticipation and
obviousness rejections over Hirakawa.
PRINCIPLES OF LAW
In addition to the principles of law set forth above with respect to the
Examiner’s first presented grounds of rejection, we note that:
The factual determination of anticipation requires the disclosure in a
single reference of every element of the claimed invention, either explicitly
or inherently. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997). It is also well-settled that an Examiner may shift the
burden to Appellants by showing how a prior art structure substantially
corresponds to a claimed structure such that it would be reasonable to
presume that the prior art structure would also possess a claimed function
employing an inherency theory. See In re Schreiber, 128 F.3d at 1477,
44 USPQ2d at 1432. In particular, inherency may not be established by
probabilities or possibilities and that the mere fact a certain thing may result
from a given set of circumstances is not sufficient. In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981), citing In re Hansgirg v.
Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939). In 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
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