Appeal No. 1997-3694
Application No. 08/277,013
(CCPA 1977). Such a limitation cannot be met by an element in a reference that
performs a different function, even though it may be part of a device embodying the
same general overall concept.
RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d at 1445 n.5, 221 USPQ at 389, n.5.
The examiner’s allocation of burdens, as set forth on page 4 of the Answer, is misplaced. In
certain circumstances, burden may shift to an applicant to show that a prior art structure does not
inherently possess the functionally defined limitations of the applicant’s claimed apparatus. However,
more is required than that the claims “stand rejected as being anticipated.” A prima facie case of
anticipation must be established before the burden shifts to an applicant. See In re Schreiber, 128 F.3d
1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); In re King, 801 F.2d 1324, 1327, 231
USPQ 136, 138-39 (Fed. Cir. 1986); In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 433
(CCPA 1976); In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566-67 (CCPA 1971). Because
the examiner has merely referred to prior art structures as “equivalent” to claimed elements, a prima
facie case of anticipation has not been established.
The USPTO guidelines for examination of 35 U.S.C. § 112, sixth paragraph “means or step
plus function” limitations in a claim, and in particular the section entitled “Making a prima facie case of
equivalence,” are also relevant. The prerequisite for placing the burden on an applicant to show that a
prior art element is not an equivalent of disclosed structures is finding the particular “function” in the
prior art.
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