Appeal No. 2001-2187
Application No. 09/333,356
structure with the Coggin bushing for its advantages (Final
Rejection, page 3, lines 2-5).1
The appellants’ principal argument in the opening appeal
brief is that the examiner has failed to make out a prima facie
case of obviousness in that he has failed to find support for the
appellants’ claimed apparatus including a baffle unit within a
chute. (Appeal Brief, page 5-6). This argument is based upon the
appellants’ belief that the Coggin deflector plate 56 is located
below, and not within, the discharge flow passage 18 of Coggin.
(Appeal Brief, page 5, lines 20-21).
First, we note that in examining a patent claim, the PTO must
apply the broadest reasonable meaning to the claim language,
1 Review of the respective positions of the appellants and the examiner is
difficult in this case due to the paucity of explanation afforded by the
examiner. The initial burden of establishing a prima facie basis to deny
patentability to a claimed invention, regardless of the ground, rests with the
examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). The examiner has not explained how the term “chute” is interpreted
in his claim interpretation, nor what evidence he relies upon to establish that
the Coggin baffle is within the chute of the walled melting receptacle. The
late amplification of his position in the Examiner’s Answer leaves us not only
with a Reply Brief from the Appellant which is unanswered, but also now raises
more issues than the Appeal Brief.
The record contains the statements from the examiner that “[t]he Coggin
drawings clearly show a baffle in a chute. It appears that Applicant does not
consider the structure in which the Coggin baffle is located to be a chute.
However, the Examiner can find no basis for agreeing with such position.” Final
Rejection, page 4, 1-4). “Feature 56 of Coggin is the baffle unit within the
chute.” (Examiner’s Answer, page 5, line 11). “Examiner can find no reason why
such cannot be considered a chute. Examiner has yet to be presented with a
reason why the Coggin bottom portion structure is not a chute.” (Examiner’s
Answer, page 7, lines 3-5). This argument puts the cart before the horse; it is
the examiner’s burden to parse the claim and apply it to the prior art, not the
appellant’s to prove why it is not so.
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