Appeal No. 2000-1682 Page 5
Application No. 08/845,503
skin. (Page 3; also see Fig. 1). In our view, the examiner
had a reasonable basis for finding that the SU 129617 device
is inherently capable of cutting through a first layer of skin
when the device is moved parallel to the surface of the skin.
As such, we conclude that the examiner has established a prima
facie case of anticipation based on inherency.
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 the microprotrusions disclosed in SU 1296174 are not
capable of performing the functions defined in the claims.
The appellant has not submitted any evidence to prove that the
SU 1296174 microprotrusions are not capable of cutting through
the first layer of skin into the second layer of skin when the
device is moved parallel to the surface of the skin. We note
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