Appeal No. 2004-0478
Application No. 09/768,976
facie showing of anticipation. In the situation before us,
Appellants bear the burden to produce evidence showing that the
prior art apparatus does not possess the claimed properties
ascribed to Appellants' structurally identical or obvious
apparatus. See MPEP § 2112.01 (I):
Where the claimed and prior art products are identical
or substantially identical in structure or composition,
or are produced by identical or substantially identical
processes, a prima facie case of either anticipation or
obviousness has been established. In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the
PTO shows a sound basis for believing that the products
of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not."
In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990). Therefore, the prima facie case can
be rebutted by evidence showing that the prior art
products do not necessarily possess the characteristics
of the claimed product. In re Best, 562 F.2d at 1255,
195 USPQ at 433. See also Titanium Metals Corp. v.
Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
We find that the Examiner therefore correctly found that
Arya established a prima facie case of anticipation. At that
point, the burden shifted to Appellants to show that the prior
art structure did not inherently possess the functionally defined
limitations of the claimed apparatus. In re Schreiber, 128 F.3d
1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). Because
Appellants have failed to demonstrate that the functional
characteristics of the claimed invention are not inherent in the
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