Appeal No. 2001-1530
Application No. 08/981,676
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
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). The examiner maintains that
Strauch teaches a “main contact pad and said at least one edge contact pad are
separate and spaced from one another” as recited in independent claim 12. We
disagree with the examiner. The examiner maintains that “a keyboard key is seen to
comprise all the parts that form the mechanical and electrical switching parts.” (See
examiner answer at page 4.) We disagree with the examiner’s expansive definition of
the “key.” We find that the language of claim 12 requires the “key being arranged to
move” and “said key having a main contact pad . . . and at least one edge contact pad.”
Clearly, these pads are located on the moveable key. Therefore, the examiner’s
reliance (answer at page 5) on the contacts of Figure 6 is not appropriate since these
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