Appeal No. 1998-2494
Application No. 08/521,363
chromium (Cr) content of the thin film and coercivity of the media. In particular, as set out in
the Reply Brief, the fluctuation field is dependent in part on the thickness of the
ferromagnetic thin film, and the films disclosed by Murayama are substantially thicker than
those disclosed by appellants.
If a prima facie case of anticipation is established, the burden shifts to an applicant
to show that the prior art structure did not inherently possess the functionally defined
limitations of the claimed apparatus. 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). However,
we conclude, after careful review of the record, that the rejection does not establish a
1
prima facie case of anticipation.
We recognize that the recitation of inherent properties cannot patentably distinguish
a claim over the prior art. See, e.g., Schreiber, 128 F.3d at 1478-79, 44 USPQ2d at
1432-33 (functional recitations held not to distinguish claimed apparatus from prior art
apparatus inherently possessing same properties); Verdegaal Bros., Inc. v. Union Oil Co.,
1We note that appellants submitted extrinsic evidence, in the form of a technical publication, with
the Reply Brief. The evidence should have been evaluated on the record by the examiner. However, we will
not remand the case for the examiner’s evaluation of the publication and arguments presented. We have
not considered the publication, nor the arguments related thereto in the Reply Brief. The submission of the
publication was unnecessary in view of our conclusion that the rejection fails to establish a prima facie case
of anticipation.
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