Ex parte GRABHORN - Page 16




                 Appeal No. 1999-2446                                                                                    Page 16                        
                 Application No. 08/705,592                                                                                                             


                 within the container without becoming clogged with sediment                                                                            
                 carried by the water.  In that regard, we note that while each                                                                         
                 row of wood material is held in a tightly compacted mass,                                                                              
                 Figures 1-7 disclose that there remain spaces between the wood                                                                         
                 fragments.                                                                                                                             


                          After the PTO establishes a prima facie case of                                                                               
                 anticipation based on inherency, the burden shifts to the                                                                              
                 appellant 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, appellant's burden                                                                             
                 before the PTO is to prove that Scott does not perform the                                                                             
                 functions defined in claim 6.  The appellant has not come                                                                              
                 forward with evidence that satisfies this burden.   In that                             5                                              
                 regard, the appellant's declaration under 37 CFR  1.132                                                                               
                 (Paper No. 4, filed March 20, 1997) does not satisfy this                                                                              


                          5  Compare 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, 566-67 (CCPA 1971).                                                                                                               







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