Appeal 2007-4227
Application 10/409,417
C. Discussion
"A claim is anticipated if each and every limitation is found either
expressly or inherently in a single prior art reference." Bristol-Myers Squibb
Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374, 58 USPQ2d 1508, 1512
(Fed. Cir. 2001) (citation omitted). "In general, a limitation or the entire
invention is inherent and in the public domain if it is the 'natural result
flowing from' the explicit disclosure of the prior art." Schering Corp. v.
Geneva Pharm., Inc., 339 F.3d 1373, 1379, 67 USPQ2d 1664, 1669 (Fed.
Cir. 2003). The inherent characteristics need not have been recognized.
Id. at 1377–78, 67 USPQ2d at 1667. Moreover, "when the PTO shows
sound basis for believing that the products of the applicant and the prior art
are the same, the applicant has the burden of showing that they are not." In
re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990);
"[w]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,"
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (citation
omitted).
Obviousness is a legal conclusion based on factual inquiries including
the scope and content of the prior art, the differences between the prior art
and the claimed subject matter, and the level of ordinary skill in the pertinent
art. Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966).
The inquiry is broad and any secondary considerations that prove instructive
should be considered. KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739,
82 USPQ2d 1385, 1389 (2007).
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