Appeal No. 2004-0363
Application 09/176,866
conclude that they are capable of performing the claimed
functions since the claimed and Holt’s applicator cavity and
connection tube structures appear to be identical or
substantially identical. See, e.g., In re Schreiber, 128 F.3d
1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Where, as
here, there is a reasonable basis to believe that Holt’s
applicator cavity and connection tube structures are capable of
performing the claimed functions, it is incumbent upon the
appellant to prove that such structures are not capable of
performing the claimed functions. Schreiber, 128 F.3d at 1478,
44 USPQ2d at 1432. The present record, however, is devoid of
such proof.
Thus, on this record, we agree with the examiner that Holt
anticipates the claimed subject matter within the meaning of 35
U.S.C. § 102(b). Accordingly, we affirm the examiner’s decision
rejecting claim 1 under 35 U.S.C. § 102(b).
OBVIOUSNESS
The obviousness of an invention cannot be established by
combining the teachings of the prior art references absent some
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