Appeal No. 2004-0581
Application No. 09/041,105
evidence of patentability. See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). It follows that we
will sustain the examiner’s Section 103 rejection of independent
claim 1 and of nonargued dependent claims 3 and 4 as being
unpatentable over Yoshioka. Analogously, we also will sustain
the examiner’s Section 103 rejection of nonargued dependent claim
2 as being unpatentable over Yoshioka in view of Akcasu.
Our foregoing analysis also applies to the examiner’s
Section 103 rejection of independent claim 10 as being
unpatentable over Shimizu. On the record before us, the examiner
has established and the appellants have not disputed that the
structural elements of Shimizu’s Figure 9 device correspond to
the structural elements recited in claim 10. In this way, the
examiner has established a reasonable basis for his belief that
Shimizu’s device necessarily and inherently possesses the same
functional characteristics as the appellants’ here claimed
device. Thus, here, as before, the examiner has properly shifted
to the appellants the burden of proving that the prior art device
of Shimizu does not actually possess the functional
characteristics in question. For reasons corresponding to those
previously discussed, the appellants have failed to carry their
burden of proof on the record of this appeal.
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