Appeal 2007-1472
Application 10/440,770
169 F.3d 743, 745, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999) (citations and
internal quotation marks omitted).
"[A] prima facie case of anticipation [may be] based on inherency."
In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986).
Once a prima facie case of anticipation has been established, the burden
shifts to the Appellants to prove that the prior art product does not
necessarily or inherently possess the characteristics of the claimed product.
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)
("Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product."). See also In re Spada, 911 F.2d 705, 708-09, 15
USPQ2d 1655, 1657-58 (Fed. Cir. 1990).
At the outset, we note that Appellants have addressed independent
claim 1 in the same grouping as independent claim 11. We find the method
of independent claim 11 to be broader than the system with “means plus
function” limitations recited in independent claim 1. Therefore, we select
independent claim 11 as the representative claim for the group, and we will
address Appellants’ arguments as they apply to our selected representative
claim 11. Additionally, we note that the Reply Brief merely repeats the
same arguments advanced in the Brief.
From our review of the teachings of Torrey, we agree with
Appellants’ correlation of the teachings of Torrey at pages 7-11 of the Brief,
but we cannot agree with Appellants’ final conclusion that Torrey does not
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