Appeal No. 2002-2184
Application No. 08/406,297
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 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 claims 67 and 68.
Appellants argue that independent claim 67 requires “a manifold plate having a
surface affixed to a surface of the orifice plate and having spaced arrays of ink
passages extending through the manifold plate as well as arrays of passages in the
surface of the manifold plate affixed to the surface of the orifice plate which
communicate with the orifices in the orifice plate.” (Brief, page 38, emphasis original).
Appellants argue that Yasuhara does not teach the manifold plate having arrays of
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