Appeal No. 2005-1576
Application No. 09/885,217
prior art reference discloses, expressly or under the principles
of inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
At pages 3, 4, 10, and 11 of the Answer, the Examiner
indicates how the various limitations in representative claim 223
are read on the disclosure of Morishita. In particular, the
Examiner directs attention to the illustrations in Figures 17-19
of Morishita along with the accompanying description beginning at
column 1, line 66 of Morishita.
In our view, the Examiner’s analysis is sufficiently
reasonable that we find that the Examiner has as least satisfied
the burden of presenting a prima facie case of anticipation. The
burden is, therefore, upon Appellants to come forward with
evidence and/or arguments which persuasively rebut the Examiner’s
prima facie case. Only those arguments actually made by
Appellants have been considered in this decision. Arguments
which Appellants could have made but chose not to make in the
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