Appeal 2007-1096
Application 10/872,181
written description does not define an amount of “pressing force” nor any
way for the Examiner to have determined that securing Nelson’s backing to
the primary magnet would not meet the claimed limitation of a
“predetermined pressing force.” The Examiner has not ignored this
limitation as asserted by Appellants (Reply Br. 2), but has reasonably
presumed that securing the backing to the magnet would satisfy the claimed
limitation (Answer 5). Thus, contrary to Appellants’ arguments (Reply Br.
4), the Examiner has provided an explanation for her position. Having
established prima facie anticipation of the claimed subject matter, the
Examiner properly shifted the burden to Appellants to prove otherwise.
Spada, 911 F.2d at 708, 15 USPQ2d at 1658; In re King, 801 F.2d 1324,
1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986). We find no evidence in the
record before us to distinguish the claimed “pressing force” from the
securing force utilized in Nelson.
It is also urged by Appellants that Nelson’s member 36 is not a
stiffening member as required by the claims (Br. 9). As we have interpreted
this element, a stiffening member must be capable of covering part of the
uvula and pressing against the uvula when held in place by the “backing.”
Nelson clearly shows primary magnets that are pressed against the uvula,
including magnets that are configured to the uvula’s shape (Nelson, Figs 8
and 10a). Thus, we agree with the Examiner’s determination that Nelson’s
primary magnet encompasses the claimed stiffening member.
For the foregoing reasons, we affirm the rejection of claim 1. Because
they were not separately argued, claims 3, 14, and 15 fall with claim 1.
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