Appeal No. 2006-1095 Page 10
Application No. 10/280,188
& Inter. 1990) [emphasis in original]. “[A]fter the PTO establishes a prima
facie case of anticipation based on inherency, the burden shifts to appellant
to ‘prove that the subject matter shown to be in the prior art does not
possess the characteristic relied on.’ ” In re King, 801 F.2d 1324, 1327, 231
USPQ 136, 138 (Fed. Cir. 1986) quoting In re Swinehart, 439 F.2d 210,
212-13, 169 USPQ 226, 229 (CCPA 1971). See also MPEP §§ 2112 (IV.),
(V.).
In the instant case, we note that the examiner has provided both a
rationale in the answer and also extrinsic evidence to support the examiner’s
finding of inherent anticipation with respect to the Boiarski reference. We
note that appellants have responded by merely stating that the extrinsic
evidence provided by the examiner (to support the finding of inherent
anticipation) “is tantamount to combining references, which is inappropriate
in conjunction with anticipation” [reply brief, page 2]. Therefore, we find
that appellants have not met their burden of proving that the subject matter
shown to be in the prior art does not possess the characteristic relied on by
the examiner. Accordingly, we will sustain the examiner’s rejection of
representative claim 1 as being anticipated by Boiarski for essentially the
same reasons argued by the examiner in the answer. We further note that
appellants have not presented any substantive arguments directed
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