Appeal No. 1999-1847
Application No. 08/810,581
specifics for programming these standard functional units. Similarly, we find that from the
basic functional description of these standard components, it would have been obvious to
one of ordinary skill in the art at the time of the invention to program and interface these
components together to make and use the system to aid in the selection of ink fountains for
adjustment by an operator.
35 U.S.C. § 102
"Anticipation is established only when a single prior art reference discloses, expressly
or under the principles of inherency, each and every element of a claimed invention."
RCA Corp. v. Applied Digital Data Systems. Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
It is well settled that the burden of establishing a prima facie case of anticipation
resides with the Patent and Trademark Office (PTO). See In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). 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 applied prior art reference does not
perform the functions defined in the claims. Compare In re Best, 562 F.2d 1252, 1255,
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