Appeal 2007-1925
Application 09/391,869
2 USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 102
begins with a determination of the scope of the claim. We determine the scope of
the claims in patent applications not solely on the basis of the claim language, but
upon giving claims their broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 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
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