Appeal 2007-1427
Application 09/826,240
detect voltage level changes in the signals associated with Mittal’s
functional unit [emphasis added]. Thus, the Examiner finds Mittal
[inherently] discloses at least one edge detection circuit configured to
determine a voltage change in the at least one node and also that the
transition rate is based on the voltage change (Answer 8, ¶ 1).
We note that “[i]n 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 applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original). “[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 King, 801
F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986) (quoting In re
Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 229 (CCPA 1971)). See
also MPEP §§ 2112 (IV.), (V.).
This reasoning is applicable here. We find the Examiner has provided
a rationale in the Answer that reasonably supports the finding of inherent
anticipation. We see no response in the Reply Brief that specifically
addresses the Examiner’s finding that some sort of edge detection circuitry
must be used to detect voltage level changes in the signals associated with
Mittal’s functional unit (see Answer 8, ¶ 1). Therefore, we find Appellant
has not met the burden of proving that the subject matter shown to be in the
prior art does not possess the characteristic relied on by the Examiner.
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