Ex Parte Drost - Page 7

               Appeal 2007-2888                                                                             
               Application 11/017,602                                                                       
                                                 Analysis                                                   
                      “A patent is invalid for anticipation if a single prior art reference                 
               discloses each and every limitation of the claimed invention.” Schering                      
               Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664,                          
               1667 (Fed. Cir. 2003) (internal citations omitted).  A “prior art reference                  
               may anticipate without disclosing a feature of the claimed invention if that                 
               missing characteristic is necessarily present, or inherent, in the single                    
               anticipating reference.” SmithKline Beecham Corp. v. Apotex Corp., 403                       
               F.3d 1331, 1343 (Fed. Cir. 2005) (citing Continental Can Co. v. Monsanto                     
               Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)).                                                  
                      The PTO does not have the ability “to manufacture products or to                      
               obtain and compare prior art products.”  In re Best, 562 F.2d 1252, 1255,                    
               195 USPQ 430, 433-34 (CCPA 1977).  Thus, once “the PTO shows sound                           
               basis for believing that the products 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. Cir. 1990).                             
                      In this case, we agree with the Examiner’s findings that Sloan meets                  
               all the elements of claims 1 and 17 (FF 9-10).  Although Sloan does not                      
               explicitly state that the insulating elements are fit between the frame                      
               members by an “interference fit” or a “forced fit” as recited in claim 1 and                 
               17, respectively, we agree with the Examiner’s reasoning that such                           
               limitation is inherent met by Sloan because Sloan describes the elements as                  
               “fit tightly” between the frame members to “fill [the space]. . . as much as                 
               possible” (FF 7, 10).                                                                        
                      Thus, in our opinion, the Examiner has properly shifted the burden to                 
               Appellant to prove that Sloan’s insulating elements, when fit between the                    

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