Appeal No. 2004-1194 Page 8
Application No. 09/580,880
See also In re Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981); In re
Ludtke, 441 F.2d 660, 663-64, 169 USPQ 563, 565-67 (CCPA 1971).
The examiner addressed the question of whether the functional limitations of
claims 16 and 23 are entitled to patentable weight and concluded that they are not,
because those limitations were found to be inherent in Bobkowicz. We agree.
Specifically, we believe that the examiner was justified in concluding that Bobkowicz's
rotatable grooved consolidating roll 25 is inherently capable of meeting the above-noted
functional recitations of claims 16 and 23. Thus, it is our view that the examiner
correctly found that Bobkowicz's rotatable grooved consolidating roll 25 established a
prima facie case of anticipation.
At that point, the burden shifted to the appellants to show that the prior art
structure did not inherently possess the functionally defined limitations of his claimed
apparatus. See In re Spada, 911 F.2d at 708, 15 USPQ2d at 1658; In re King, 801
F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986); In re Best, 562 F.2d 1252,
1254-55, 195 USPQ 430, 433 (CCPA 1976). Hence, the appellants' burden is to prove
that Bobkowicz's rotatable grooved consolidating roll 25 does not perform the functions
defined in claims 16 and 23. The appellants have not come forward with any evidence
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