Appeal No. 2004-0478
Application No. 09/768,976
of stiction." Appellants also cite to MPEP § 2131.01 to show
that the Examiner must provide extrinsic evidence to show that
Arya possesses Appellants' claimed property. Appellants are in
error. This section covers the general case for example where an
inherent structural component of the apparatus is not shown in
the reference. In the appeal before us, we have an identical or
substantially identical structure in the prior art reference.
For this specific situation the claimed properties or functions
are presumed to be inherent and the burden shifts to the
Appellants to show otherwise. See MPEP § 2112.01 (I), as
discussed above with respect to claim 1. We find that
Appellants' argument does not overcome the Examiner's prima facie
showing of anticipation as discussed above with respect to claim
1.
Therefore, we will sustain the Examiner's rejection under
35 U.S.C. § 102.
IV. Whether the Rejection of Claim 25 Under 35 U.S.C. § 102
is proper?
It is our view, after consideration of the record before us,
that the disclosure of Arya does fully meet the invention as
recited in claim 25. Accordingly, we affirm.
With respect to dependent claim 25, Appellants argue at page
9 of the brief by referring back to their arguments with respect
9
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