Appeal 2007-0849
Application 10/106,649
(Reply Br. 5). We note, however, that Appellant makes no effort to explain
why a person of ordinary skill in this art would not expect Hill’s method to
necessarily function in accordance with Appellant’s claimed invention.
“[I]n an ex parte proceeding to obtain a patent, . . . the Patent Office
has the initial burden of coming forward with some sort of evidence tending
to disprove novelty.” In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548
(CCPA 1970). Nevertheless, “when the PTO shows sound basis for
believing that the . . . [invention] of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.” In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cr. 1990)
(emphasis added).
On reflection, we find that the preponderance of evidence on this
record falls in favor of the Examiner. Accordingly, we affirm the rejection
of claim 18 under 35 U.S.C. § 102(b) as being anticipated by Hill. Because
Appellant did not separately group or argue the claims, claims 19-21 and 23-
27 fall together with claim 18. 37 C.F.R. § 41.37(c)(1)(vii).
CONCLUSION
In summary, we affirm the rejection of record.
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