Appeal No. 2006-3202 Page 9
Application No. 10/323,592
Vacate and Remand
Claims 30-33
Claim 30 further requires “diagnosing the presence of inflamed atherosclerotic
plaque in the blood vessel where the difference is above zero but not more than
0.14°C.”
On consideration of the record before us, we conclude that the rejection of claims
30-33 as obvious over Casscells ‘261 in view of Nakano is not in condition for a decision
on appeal. We vacate the rejection and remand the application to the Examiner to
consider the following issues and take appropriate action.
1) Are claims 30-33 (or any other pending claims, including claim 1) inherently
anticipated by Casscells ‘261?
Inherency asks whether a subject matter is “necessarily” present in the prior art
reference, “not merely probably or possibly present, in the prior art.” Trintec Indus. v.
Top-U.S.A., 295 F.3d 1292, 1295, 63 USPQ2d 1597, 1599 (Fed. Cir. 2002). It is the
Examiner’s burden to provide reason to believe that the claimed subject matter may be
an inherent characteristic of the prior art. See In re Thrift, 298 F.3d 1357, 1365, 63
USPQ2d 2002, 2007 (Fed. Cir. 2002); In re Schreiber, 128 F.3d 1473, 1478, 44
USPQ2d 1429, 1432 (Fed. Cir. 1997); In re Swinehart, 439 F.2d 210, 213, 169 USPQ
226, 228 (CCPA 1971). Once the Examiner has satisfied this duty, the burden shifts to
Appellant to provide evidence to the contrary.
Claim 30 comprises the same steps recited in claim 1, which we have found (as
discussed above) to be described by Casscells ‘261. The difference is that claim 30
diagnoses the plaque at a temperature “above zero but not more than 0.14°C.” The
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