Appeal 2007-1672
Application 09/966,540
operation of the Buckley system, as it would be understood by persons of
ordinary skill reading the Buckley patent, reasonably supports the
determination that the absence of a step to provide his/her identification
necessarily flows from the teachings of Buckley and that it would be so
recognized by persons of ordinary skill. Accordingly, we find that the
Buckley device is inherently configured to transmit the information “without
providing an identification of a user of the transaction device.” We find that
there are no differences between the claimed invention and the reference
disclosure, as viewed by a person of ordinary skill in the field of the
invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Accordingly, in our view, the Examiner has made out a prima facie
case of anticipation for the claimed subject matter over Buckley. Since the
Examiner has established a prima facie case of anticipation based on
inherency, the burden shifts to the Appellant to prove that the subject matter
shown to be in the prior art does not possess the characteristics of the
claimed invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964,
966 (Fed. Cir. 1985); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138
(Fed. Cir. 1986). In that regard, Appellant has not shown that one of
ordinary skill would not read Buckley as disclosing a transaction device
comprising a communication module configured not to provide the
identification of a user.
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