Appeal 2007-2888
Application 11/017,602
Analysis
“A patent is invalid for anticipation if a single prior art reference
discloses each and every limitation of the claimed invention.” Schering
Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664,
1667 (Fed. Cir. 2003) (internal citations omitted). A “prior art reference
may anticipate without disclosing a feature of the claimed invention if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference.” SmithKline Beecham Corp. v. Apotex Corp., 403
F.3d 1331, 1343 (Fed. Cir. 2005) (citing Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)).
The PTO does not have the ability “to manufacture products or to
obtain and compare prior art products.” In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433-34 (CCPA 1977). Thus, once “the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.” In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In this case, we agree with the Examiner’s findings that Sloan meets
all the elements of claims 1 and 17 (FF 9-10). Although Sloan does not
explicitly state that the insulating elements are fit between the frame
members by an “interference fit” or a “forced fit” as recited in claim 1 and
17, respectively, we agree with the Examiner’s reasoning that such
limitation is inherent met by Sloan because Sloan describes the elements as
“fit tightly” between the frame members to “fill [the space]. . . as much as
possible” (FF 7, 10).
Thus, in our opinion, the Examiner has properly shifted the burden to
Appellant to prove that Sloan’s insulating elements, when fit between the
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