Appeal No. 2001-0413
Application No. 09/182,404
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
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
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