Appeal No. 1998-3229 Page 4
Application No. 08/575,976
OPINION
Upon careful review of the entire record including the
respective positions advanced by appellant and the examiner,
we find ourselves in agreement with appellant that the
examiner has failed to carry the burden of establishing a
prima facie case of anticipation. Accordingly, we will
reverse the examiner’s § 102 rejection.
The examiner has the initial burden of establishing a
prima facie case of anticipation by pointing out where all of
the claim limitations appear in a single reference. See In re
Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990);
In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed.
Cir. 1986). The reference must lead one of ordinary skill in
the art to subject matter which falls within the scope of the
claims “without any need for picking, choosing, and combining
various disclosures not directly related to each other by the
teachings of the cited reference” In re Arkley, 455 F.2d 586,
587,
172 USPQ 524, 526 (CCPA 1972).
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