Appeal 2007-1480
Application 10/667,078
1830 (Fed. Cir. 2004). The properly interpreted claim must then be
compared with the prior art.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349, 64
USPQ2d 1202, 1206 (Fed. Cir. 2002) (citations and internal quotation marks
omitted). "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, 1951 (Fed. Cir. 1999) (citations and internal quotation marks
omitted).
"[A] prima facie case of anticipation [may be] based on inherency."
In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986).
Once a prima facie case of anticipation has been established, the burden
shifts to the Appellant to prove that the prior art product does not necessarily
or inherently possess the characteristics of the claimed product. In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) ("Where, as
here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product."). See also In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655,
1657-58 (Fed. Cir. 1990).
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