Appeal 2007-1835
Application 10/509,861
of the heat flux density . . . in the casting operation . . .’, as in the presently
claimed invention.” (Br. 6-7).
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps. First, the Examiner must interpret the claim
language where necessary. Secondly, the Examiner must compare the
properly construed claims to a prior art reference and make factual findings
that "each and every limitation is found either expressly or inherently in
[that] single prior art reference." In re Crish, 393 F.3d 1253, 1256, 73
USPQ2d 1364, 1366-67 (Fed. Cir. 2004) (quoting Celeritas Techs. Ltd. v.
Rockwell Int'l Corp., 150 F.3d 1354, [1361], [47 USPQ2d 1516, 1522] (Fed.
Cir. 1998)). As explained by our reviewing court in In re Morris, 127 F.3d
1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997):
The process of patent prosecution is an interactive one.
Once the PTO has made an initial determination that specified
claims are not patentable (the prima facie case concept, see In
re Oetiker, 977 F.2d 1443, 1448, 24 USPQ2d 1443, 1447 (Fed.
Cir. 1992) (Plager, J. concurring)), the burden of production
falls upon the applicant to establish entitlement to a patent. See
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990); In re King, 801 F.2d 1324, 1327, 231 USPQ 136,
138 (Fed. Cir. 1986) (burden shifts to appellant after the PTO
establishes a prima facie case of anticipation). This promotes
the development of the written record before the PTO that
provides the requisite written notice to the public as to what the
applicant claims as the invention.
The present record fails to provide the requisite written notice to the
public. The Examiner has not provided an explanation of how the claim
language has been interpreted and has not explicitly identified where “each
and every claim limitation” is disclosed in GB ‘988. For example, the
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