Appeal 2006-3069
Application 10/661,273
has reason to believe that a functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art it possesses the authority to require the
applicant to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on. In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433 (CCPA 1977). Shifting the burden under these
circumstances is reasonable because of the PTO’s inability to manufacture
products or to obtain and compare prior art products. Id. at 1255, 195 USPQ
at 433-34. Here, we find Appellants have failed to proffer any factual
evidence that demonstrates error in the Examiner’s findings of fact. Mere
argument or conclusory statements are insufficient to rebut the Examiner’s
findings regarding Appellants’ argued functional limitations.
For at least the aforementioned reasons, we sustain the Examiner’s
rejection of representative claim 9 as being anticipated by Kuroda and we
also sustain the Examiner’s rejection of claim 9 as being anticipated by
Onda.
Pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we have decided the appeal
with respect to claims 1, 3-7, 10-15, and 17-22 in this group on the basis of
the selected claim alone. Therefore, we sustain the Examiner’s rejection of
claims 1, 3, 6, 7, 9-11, 14, 15, 17-19, and 22 as being anticipated by Kuroda
for the same reasons discussed supra with respect to representative claim 9.
Likewise, we sustain the Examiner’s rejection of claims 1, 3-5, 7, 9-13, 15,
and 17-21 as being anticipated by Onda for the same reasons discussed
supra with respect to claim 9.
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