Appeal No. 1997-0624
Application No. 08/303,556
In accordance with 37 CFR § 1.192(c)(7), we have selected claim 5 as the
representative claim from the appellants’ grouping of claims 1, 2 and 4-8 to decide the
appeal on this rejection under 35 U.S.C. § 102. (See Brief at page 5.) Thereby, in
accordance with 37 CFR § 1.192(c)(7), all claims fall with representative claim 5. Thus, it
follows that the decision of the examiner to reject claims 1, 2 and 4-8 under
35 U.S.C. § 102 is affirmed for the reasons discussed below.
"Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a claimed
invention." RCA Corp. v. Applied Digital Data Systems. Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984).
It is well settled that the burden of establishing a prima facie case of anticipation
resides with the Patent and Trademark Office (PTO). See In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). After the PTO establishes a prima facie
case of anticipation based on inherency, the burden shifts to the appellants to prove that
the subject matter shown to be in the prior art does not possess the characteristics of the
claimed invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
1985); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986). Hence,
appellants’ burden before the PTO is to prove that the applied prior art reference does not
perform the functions defined in the claims. The appellants have not come forward with
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