Appeal No. 2003-1272 Page 26
Application No. 10/039,338
in the thing described in the reference, and that it would be so recognized by persons of
ordinary skill. See Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991). We must not lose sight, however, of the fact that,
once the USPTO establishes a prima facie case of anticipation based on inherency, the
burden shifts to appellants to "prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on." See In re King, 801 F.2d 1324, 1327,
231 USPQ 136, 138 (Fed. Cir. 1986).1
While it can certainly be debated whether the examiner came forth with enough
explanation to establish a prima facie case that the bristles of Jordan will provide
traction against the ground without doing damage to the turf surface being walked on
and without puncturing golf turf, I believe that such a case can be made, so as to shift
the burden to appellants to prove otherwise. First, Jordan expressly teaches that "[i]n
use, the bristle spikes are most effective when they result in indentation of the running
surface as opposed to penetration of the surface" (column 2, lines 61-63). While Jordan
does not particularly enumerate "golf turf" as one of the surfaces for which the cleats
are specifically designed for use, Jordan does mention "modern track surfaces which
may be formed of composition materials, synthetic turf, or other variations of natural and
1The rationale for this burden-shifting is the recognition that the USPTO is not
equipped to perform the experimentation necessary to produce such proof. Id.
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