Appeal 2007-1603
Application 10/036,356
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).
From our review of the teachings of Tiedemann, Jr., we are in
substantial agreement with the Examiner that Tiedemann, Jr. teaches the
invention as broadly recited in independent claim 17. While Tiedemann, Jr.
does not use the express term "transmission quality target value," we find
that Tiedemann, Jr. does teach a method for improving performance of a
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