Appeal No. 1999-2702
Application No. 08/509,867
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, the appellants’ 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, 195 USPQ 430, 433-34 (CCPA 1977); In re Ludtke,
441 F.2d 660, 664, 169 USPQ 563, 566-67 (CCPA 1971). Here, we find that appellants
have met this burden, and we will not sustain the rejection of claim 1.
The examiner maintains that the system of Phillips can generate “all” permutations.
The examiner at page 4 of the answer cites to col. 9, which discusses permutations
generally. The examiner further maintains that Phillips' disclosure contains enough
information to enable one of ordinary skill in the art to implement a circuit which could
produce the full set of permutations. While enablement is not at issue in a rejection under
4
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