Appeal No. 1999-1848
Application No. 08/532,177
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, appellants’ burden before the PTO is to prove that the applied
prior art reference does not perform the functions defined in the claims. 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). Here, we find that appellants have
met this burden and we will not sustain the rejection of claim 1.
Appellants argue that Metz does not disclose a “first amplitude control means
responsive to a phase control signal supplied thereto for varying the amplitudes of said
second and third intermediate signals concurrently and in opposite directions for
controlling the phase of said phase shifted output signal; and second amplitude control
means responsive to said phase control signal, for varying the amplitude of said first
intermediate signal.” (See brief at page 4.) We agree with appellants. From our
understanding of Metz, Metz does not teach (2) signals which are controlled concurrently
and in opposite directions due to the fact that one of the multipliers is turned off while the
other is turned on. Therefore, the examiner has not established a prima facie case of
anticipation, and we will not sustain the rejection of claim 1.
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