Appeal 2007-1199
Application 10/124,648
necessarily be present. Continental Can Co. USA, Inc. v. Monsanto Co., 948
F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). Once a prima
facie case of anticipation by inherency has been established, however, the
burden shifts to the Applicants to prove that the subject matter shown in the
prior art does not possess the characteristics relied on by the Examiner. In re
King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986). The
Patent and Trademark Office is not equipped to prove any assertion by way
of conducting experiments. In re King, 801 F.2d at 1327, 231 USPQ at 139.
F. Analysis
In an appeal such as this, the Applicants have a burden to demonstrate
error or errors in the Examiner’s findings of which feature or features of
each claim is met by an anticipatory reference and how. We are not here to
conduct examination anew, based on the Applicants’ mere general assertion
that Nigam does not disclose all the features of the claimed invention.
With regard to the Applicants’ Appeal Brief, none of the Examiner’s
specific findings and determinations with regard to where each claim
limitation is found in and disclosed by Nigam is controverted individually by
the Applicants, including (1) the finding that Nigam discloses an intraocular
lens comprising an optic having a diameter, (2) the finding that Nigam’s lens
has at least one pair of footplates which are separated by a haptic and
attached to the optic by a ramp, (3) the finding that the ramp in Nigam is
wider in a plane in which the optic lays than it is in a plane perpendicular to
the plane of the optic, (4) the finding that Nigam’s lens is made of soft
acrylic, silicones, or hydrogels, (5) the finding that for Nigam’s lens the ratio
of haptic spread to optic diameter is less than 1.5 and also 1.3, as is preferred
by the Applicants, and even (6) the finding that Nigam’s lens will inherently
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