Appeal No. 1998-0380
Application No. 08/518,062
set forth in claim 5/1. The rejection of claim 6/1 is
sustained since it stands or falls with claim 1 as earlier
indicated.
Appellants’ argument does not persuade us that the
examiner erred in rejecting claims 1, 5/1, and 6/1 under 35
U.S.C.
§ 102(b). As explained above, we concluded that the
referenced portion of claim 1 addresses an inherent attribute
of the electron gun of Hughes. It is a well established
principle that when, as here, there is sound reason to believe
that a limitation of a claim is an inherent characteristic of
the prior art, it is encumbent upon appellants to prove that
the prior art does not possess the characteristic. See In re
Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971).
It follows that, as to
claim 1, the arguments of counsel in the main (pages 6 and 7)
and reply briefs are not evidence and, further, they are
simply not convincing that claim 1 is patentable over the
Hughes reference.
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