Appeal No. 2005-0584
Application No. 09/745,414 Page 3
OPINION
Upon review of the entire record including the respective
positions advanced by appellants and the examiner with respect to
the rejection that remains before us, we find ourselves in
agreement with appellants since the examiner has failed to carry
the burden of establishing a prima facie case of anticipation.
Accordingly, we will not sustain the examiner's stated rejection
on this record substantially for reasons set forth in appellants’
briefs.
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). In
order for a claimed invention to be anticipated under 35 U.S.C.
§ 102, all of the elements of the claim must be found in one
reference. See Scripps Clinic & Research Found. v. Genentech
Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Here, the examiner has not convincingly explained where
Nicholson describes a structure which falls within the scope of
appealed claim 10. Therefore, the examiner has not carried the
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