Appeal No. 2003-1622
Application No. 09/146,529
"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, appellants’ 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). With respect to independent
claim 14, the examiner maintains that Holmann teaches all the hardware elements of
the processing device. (See answer at page 12.) While we agree with the examiner
that the specific hardware elements (instruction decoder and instruction execution unit)
are disclosed, the examiner has not addressed the operation of these hardware
elements with respect to the recited claim limitations. Specifically, the examiner has not
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