Appeal No. 2006-3234
Application No. 90/006,410
"To establish inherency, the extrinsic evidence 'must make clear that
the missing descriptive matter is necessarily present in the thing described in
the reference, and that it would be so recognized by persons of ordinary
skill. Inherency, however, may 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.' " In re Robertson, 169 F.3d 743, 745, 49
USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (citations omitted). “[A]fter the
PTO establishes a prima facie case of anticipation based on inherency, the
burden shifts to appellant to 'prove that the subject matter shown to be in the
prior art does not possess the characteristic relied on.'” In re Swinehart, 439
F.2d 210, 212-13, 169 USPQ 226, 229 (CCPA 1971)."
35 USC § 103(a)
“A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.” 35 USC § 103(a).
In considering whether claims are patentable under 35 USC § 103(a)
we consider the scope and content of the prior art, the differences between
the prior art and the claims at issue, the level of ordinary skill in the
pertinent art and any secondary considerations that would bear upon
obviousness. Graham v. John Deere, 382 US 1, 16 (1966).
One of these secondary considerations is evidence of unexpected
results. To be persuasive, the showing of unexpected results must be
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