Appeal 2006-3302]
Application 10/153,865
The Examiner recognizes that Ono does not: (1) explicitly describe a
power transmission shaft, (2) refer to pipes prepared via electric-resistance
welding, (3) describe "coupling members respectively provided on the
opposite ends of the pipe part" (see claim 1), and does not describe a
Rockwell hardness (HRC) for an electro-unite portion of the pipe part as set
forth in the appealed claim (Answer 3). The Examiner maintains an
anticipation position based on assertions of inherency, alleged patentable
equivalence, and an alleged appropriately shifted burden requiring
Appellants to furnish proof of novelty despite the acknowledged differences
(Answer 3-4).
Appellants maintain that the Examiner’s anticipation position is
flawed for several reasons. One of the alleged reversible errors asserted by
Appellants is that the Examiner has not established an adequate factual basis
to support the assertion that the product of Ono would be reasonably,
necessarily expected to possess an electro-unite portion of a pipe part which
has been hardened to a HRC of 45 or more, as required by claim 1.
Hence, a dispositive question raised in this appeal as to the
anticipation prong of the Examiner’s rejection is whether the Examiner has
met the initial burden of presenting a sufficient factual basis to support a
prima facie determination that the laser-welded steel pipe of Ono would
intrinsically or necessarily possess a pipe part with a portion thereof, which
corresponds to Appellants’ electro-unite portion, hardened to a HRC of 45 or
more. We answer that question in the negative.
The Examiner, in relying on a theory of inherency, must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristics necessarily flow
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