Appeal No. 1996-3806
Application 08/183,152
The examiner responds that “Sastri expressly discloses that
the cobalt is the continuous phase which the examiner
concludes ‘binds’ the claimed particles. Again the appellant
has failed to provide factual evidence [that] the claimed
coating differs in
kind from the prior art and the rejection stands” (answer,
page 4).2
It is the examiner who has the initial burden of
establishing a prima facie case of anticipation or
obviousness. See Spada, 911 F.2d at 708, 15 USPQ2d at 1657;
King, 801 F.2d at 1327, 231 USPQ at 138-39; In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976).
The examiner, however, has placed that initial burden on
appellant. Before appellant must come forward with evidence,
the examiner must
2The examiner refers to a reference no. 4,406,670
(answer, page 4). This reference is not included in the
statement of the rejection and, therefore, is not properly
before us. See In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ
406, 407 n.3 (CCPA 1970). Consequently, we have not relied
upon this reference in reaching our decision.
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