Appeal 2007-2140
Application 09/892,790
Patent 5,917,679
bearing surfaces and additional functional structures (e.g., transducers) and a
knowledge of how surface and structure changes impact the sliders operation
for its intended purpose.
IV. EXAMINER’S REJECTION UNDER 35 U.S.C. § 102
A. Legal Principles
On appeal, Appellants bear the burden of showing that the Examiner
has not established a legally sufficient basis for anticipation based on the
Nepela patent.
Appellants may sustain this burden by showing that the prior art
reference relied upon by the Examiner fails to disclose an element of the
claim. It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
B. § 102 - The Examiner’s Prima Facie Case
Our Findings of Fact 23-27 set out the basis upon which the Examiner
originally made a § 102 rejection in the Final Office Action. As shown in
Findings of Fact 28-37, the record supports the Examiner’s findings with
respect to Nepela.
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