Appeal No. 96-0113
Application 07/848,779
explanations on how each claim reads on Sullivan '501, the
examiner's holding of anticipation is without basis.
In the absence of a prima facie case of anticipation, the
appellant is under no obligation to set forth any counter
argument or rebuttal evidence. The burden has not shifted to the
appellant to make such a response, and reasonably so. Without
the examiner's initial findings, there is no target or point with
which the appellant can take issue with. To shift the burden to
the appellant under such a circumstance to identify features
which he contends are not disclosed by the allegedly anticipatory
reference is tantamount to requiring the appellant to demonstrate
patentability, contrary to the principle of 35 U.S.C. § 102.
Moreover, procedural due process and 35 U.S.C. § 132 of the
patent statute require that applicants be adequately notified of
the reasons for the rejection of claims so that they can decide
how to proceed. In re Ludtke, 441 F.2d 660, 662, 169 USPQ 563,
565 (CCPA 1971). Accordingly, we do not take the view that the
appellant has conceded a lack of novelty of all claim features
the appellant happens to not have addressed in the appeal brief.
Instead, for the foregoing reasons, we conclude that the examiner
has failed to put forth a prima facie case of lack of novelty.
In the alternative, even if it is assumed that all features
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