Appeal No. 1999-2122
Application No. 08/564,659
Even considering only the claims in groups (a) through (g)
which are directed to an apparatus, the Examiner’s position still
must be regarded as insufficient to establish a prima facie case
of obviousness. The essence of this position is the Examiner’s
implicit belief that the prior art apparatus is inherently capable
of performing the same function as the Appellant’s claimed
apparatus. Concerning this point, it is well settled that an
Examiner must provide some evidence or scientific reasoning to
establish the reasonableness of his belief that the functional
limitation in question is an inherent characteristic of the prior
art. Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int.
1986). This is because the initial burden of establishing a
prima facie basis to deny patentability rests upon the Examiner.
Ex parte Levy, 17 USPQ2d 1461, 1463-64 (Bd. Pat. App. & Int. 1990).
No such evidence or scientific reasoning has been provided by
the Examiner on the record of this appeal to support his view
that the functional limitations of the apparatus claims under
consideration are inherent characteristics of the prior art.2
2 Indeed, the Examiner seems to be under the erroneous
impression that the Appellant must provide a reason for
believing the contrary as evinced by the Examiner’s previously
quoted statement “[t]here is no reason to believe that the
apparatus of the prior art would not perform the same function
(continued...)
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