Appeal No. 2002-1645 Page 10
Application No. 09/281,553
in fact, be an inherent characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.
See also In re Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981); In re
Ludtke, 441 F.2d 660, 663-64, 169 USPQ 563, 565-67 (CCPA 1971).
At this point, the burden has shifted to the appellant to show that the prior art
structure of Engelhart does not inherently possess the functionally/capability defined
limitations of the claimed apparatus. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990); In re King, 801 F.2d at 1327, 231 USPQ at 138-39; In re
Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 433 (CCPA 1976). The appellant has
failed to do so.
For the reasons set forth above, the decision of the examiner to reject claim 1
under 35 U.S.C. § 102(b) as being anticipated by Engelhart is affirmed.
Claims 2 and 5 to 10
The appellant has grouped claims 1, 2 and 5 to 10 as standing or falling
together.2 Thereby, in accordance with 37 CFR § 1.192(c)(7), claims 2 and 5 to 10 fall
2 See page 2 of the appellant's brief.
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