Appeal 2007-1671
Application 10/374,837
"[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).
The Board may find in the prior art a feature which is capable of performing
a function recited in the claims. “The Board's finding that the scaled-up version of
figure 5 of Harz would be capable of performing all of the functions recited in
Schreiber's claim 1 is a factual finding, which …[otherwise] …must be shown to
be clearly erroneous…” In re Schreiber, 128 F.3d 1473, 1479, 44 USPQ2d 1429,
1434 (Fed. Cir. 1973).
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