Appeal No. 1997-2151
Application No. 08/221,959
Claims 28, 29, 33, 35, 38, 39 and 40
After the PTO establishes a prima facie case of anticipation based on inherency,
the burden shifts to the appellant 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, appellant's burden before the PTO is to
prove that the applied prior art reference does not perform the functions defined in the
claims. The appellant has 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); 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 our view, the examiner has set forth a prima facie case of anticipation. The
examiner has set forth the structure in Tanabe which corresponds to the claimed invention.
(See answer at pages 4-7.) Furthermore, the examiner has responded to appellant’s
arguments. (See answer at pages 7-10.) The examiner points out that the claim language
is broader than appellant argues. (See answer at page 8.) We agree with the examiner.
Appellant argues the timing and duration of the blanking signal as a distinguishing factor,
but cites to no specific claim language in claims 28 or 35. (See brief at page 3.) We
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