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Monday, January 18, 2010


3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Coverstar, Inc. LEE 112(2)/102(b)/103(a) RADER, FISHMAN & GRAUER PLLC

Under the principles of inherency, if the prior art necessarily operates exactly as claimed, then the claimed invention is met. MEHL/Biophile International Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). That a claim feature may possibly, or even probably, result from the prior art is not sufficient to show inherency. Id. The Examiner must make out a prima facie case, through evidence or explanation, that what is urged as inherent necessarily flows from the teachings of the prior art before the burden is shifted to an applicant to disprove the inherency theory. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).

King, In re, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir.1986) . . . . . . .1206, 2112.02, 2131.01

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