Appeal No. 2002-1924 Page 12
Application No. 09/102,342
USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990). After the PTO establishes a prima
facie case of anticipation based on inherency, the burden shifts to the appellants 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).
In our view, the examiner at pages 4-5 of the answer has properly established a
prima facie case of anticipation based on inherency. Hence, the appellants' burden
before the PTO is to prove that the golf ball covers of Horiuchi do not have a Shore D
value defined in the claims under appeal. The appellants have not come forward with
any evidence to satisfy that burden. 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). The appellants' mere argument that not all high acid ionomers
have a Shore D hardness of at least 65 citing Iotek 960 as but one example is not
evidence that the golf ball covers of Horiuchi do not have a Shore D hardness of at
least 65 especially since the golf ball covers of Horiuchi do not utilize Iotek 960 therein.
See In re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974)(attorney's
arguments in a brief cannot take the place of evidence).
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