Appeal 2006-2453
Application 10/302,391
4) Claim language must be read in light of the specification as it would
be understood by one of ordinary skill in the art, keeping in mind that
broad claim terms should not be limited solely on the basis of
specification passages. In re Bigio, 381 F.3d 1320, 1324-25, 72
USPQ2d 1209, 1211 (Fed. Cir. 2004).
5) Under the principles of inherency, if the prior art necessarily functions
in accordance with, or includes, the claimed limitations, it anticipates.
MEHL/Biophile Intern. Corp. v. Milgraum, 192 F.3d 1362, 1365, 52
USPQ2d 1303, 1305-06 (Fed. Cir. 1999) (citing In re King, 801 F.2d
1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986)).
6) Inherency may not be established by probabilities or possibilities, i.e.,
the mere fact that 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).
7) The examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Kumar, 418 F.3d 1361, 1366, 76 USPQ2d
1048, 1051 (Fed. Cir. 2005).
8) To support a rejection on obviousness grounds, the examiner must
provide a detailed analysis of the prior art and reasons why one of
ordinary skill in the art would have possessed the knowledge and
motivation to make the claimed invention. See In re Kahn, 441 F.3d
977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
9) “The mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the modification.” In
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