Appeal No. 1999-2446 Page 16
Application No. 08/705,592
within the container without becoming clogged with sediment
carried by the water. In that regard, we note that while each
row of wood material is held in a tightly compacted mass,
Figures 1-7 disclose that there remain spaces between the wood
fragments.
After the PTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to the
appellant 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, appellant's burden
before the PTO is to prove that Scott does not perform the
functions defined in claim 6. The appellant has not come
forward with evidence that satisfies this burden. In that 5
regard, the appellant's declaration under 37 CFR § 1.132
(Paper No. 4, filed March 20, 1997) does not satisfy this
5 Compare In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977); In re Ludtke, 441 F.2d 660, 664, 169 USPQ
563, 566-67 (CCPA 1971).
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