Appeal No. 1998-1927
Application No. 08/703,276
1, so as to establish a prima facie case of anticipation. After the PTO establishes a prima facie4
case of anticipation based on inherency, the burden shifts to the appellants 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, the appellants'
burden before the PTO is to prove that the sensing coil and detection hardware do not perform
the functions defined in claim 1. The appellants have not come forward with any evidence to
satisfy that burden.5
For the foregoing reasons, we shall sustain the examiner's rejection of claim 1 as being
anticipated by the Fisher patent. The only argument offered by the appellants in support of the
patentability of claims 7-10 and 12, which depend from claim 1, is that the various additional
prior art references cited to support the obviousness rejections of these claims do not overcome
the perceived deficiencies of the Fisher patent with regard to the limitations of claim 1 discussed
supra. It thus follows that we shall sustain the examiner's rejections of these claims as well.
4The prior art reference need not expressly disclose each claimed element in order to anticipate the
claimed invention. See Tyler Refrigeration v. Kysor Indus. Corp., 777 F.2d 687, 689, 227 USPQ 845, 846-847 (Fed.
Cir. 1985). Rather, if a claimed element (or elements) is inherent in a prior art reference, then that element (or
elements) is disclosed for purposes of finding anticipation. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d
628, 631-33, 2 USPQ2d 1051, 1052-54 (Fed. Cir. 1987).
5An attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405,
181 USPQ 641, 646 (CCPA 1974).
6
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