Appeal No. 2004-0755
Application No. 09/110,109
performance evaluation system” (page 1, lines 24-27). Thus, the
specification indicates that the body of claim 1, which does not
specify that the steps are steps of a performance evaluation
system, does not fully and intrinsically set forth the complete
invention. Instead, the specification indicates that the
preamble is used, along with the body of the claim, to define the
claimed subject matter. Hence, the examiner’s argument that
“performance evaluation system” in the preamble of the
appellants’ claim 1 is mere intended use is incorrect.
The examiner states that Deinhart discloses each element of
the appellants’ claim 1, and in support of that statement cites
all of Deinhart except the field of the invention (final
rejection mailed September 11, 2001, paper no. 21, pages 10-11).
The examiner has the initial burden of establishing a prima facie
case of anticipation by pointing out where all of the claim
limitations appear in a single reference. See In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); In re King,
801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986). The
examiner’s mere citation of essentially the entire Deinhart
reference is not adequate for carrying that burden.
The examiner argues that the steps in the appellants’
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