Appeal No. 2005-2435
Application No. 10/407,498
is the examiner's burden to establish the reasonableness of
believing that such functional limitations are an inherent
characteristic of the prior art apparatus. See Ex parte Levy,
17 USPQ2d 1461, 1463-64 (Bd. Pat. App. & Int. 1990) and Ex parte
Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986).
Here, the examiner has not even attempted much less succeeded
in establishing that Allred's safety device is capable of being
attached to a ladder and a structure in the manner required by
the appealed claims. Stated otherwise, the answer contains no
discussion at all of any technique for attaching patentee's safety
device to a ladder and to a structure in the manner required by the
appellant's claims. Under these circumstances, we are compelled
to determine that the examiner has failed to carry his burden
of establishing a prima facie case of anticipation based on his
implicit theory that the Allred device is inherently capable of
performing the attachment functions of the claims before us.
Compare In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1432
(Fed. Cir. 1997).
For analogous reasons, the § 103 rejection of claims 4, 11 and
12 over Allred likewise is hereby reversed. Even if the Allread
safety device were modified in the matter proposed by the examiner
in these rejections, there still would be lacking a prima facie
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