Appeal No. 97-3423
Application 08/336,134
[A]fter the PTO establishes a prima facie case of
anticipation based on inherency, the burden shifts
to appellant to "prove that the subject matter shown
to be in the prior art does not possess the
characteristic relied on." In re Swinehart, 439
F.2d 210, 212-13, 169 USPQ 226, 229 (CCPA 1971).
Accord In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ
594, 596 (CCPA 1980), quoted with approval in In re
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed.
Cir. 1985); 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 (1971).
Moreover, we note that the examiner's arguments for
inherency find additional support in the fact that the
preferred embodiment of Swindler's notebook computer, like
appellants' (see Fig. 4 ), has a pair of PCMCIA (Personal4
Computer Memory Card
International Association ) slots for receiving PCMCIA cards5
(col. 6, lines 39-52). The on-line TechEncyclopedia
discussion of such cards, also known as "PC Cards," describes6
4These card slots are mentioned at page 6, line 20 of
appellants' specification.
5The meaning of PCMCIA is given in Swindler at column
10, lines 22-27.
6 See
www.techweb.com/encyclopedia/defineterm?term=PC+Card= (copy
enclosed).
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