Appeal No. 97-2418 Page 11
Application No. 08/390,843
After the PTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to the
appellants 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 Bachmann's diverter does not
perform the functions defined in claim 1. The appellants have
not come forward with any evidence to satisfy that burden.
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). Appellants' mere argument on pages 3-5 of
the brief to the effect that Bachmann does not disclose
distributing two phase mixed steam flow is not evidence. See
In re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA
1974)(attorney's arguments in a brief cannot take the place of
evidence). In addition, while it may be true that without
extensive testing the appellants have no way of determining
that the diverter valve of Bachmann would be useful in any
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