Appeal No. 1997-0460
Application 08/207,990
parte Skinner, 2 USPQ2d 1788, 1788-89 (Bd. Pat. App. & Int. 1986). The examiner has not
provided on this record the necessary evidence and/or scientific reasoning to establish the
reasonableness of any of the three positions that he has advanced in the answer to support his finding of
inherency.
With respect to the first position, advanced by the examiner in the statement of the ground of
rejection, we find that there is no disclosure or suggestion in col. 5, lines 22-48, of Shackle to coat the
cathode material with carbon particles or any other material, or to use a solvent to mix these particles.
We further find that col. 6, lines 3-19, of the reference on which the examiner relies, discloses solvents,
including polar aprotic solvents as well as less polar solvents having heteroatoms, which can be used in
preparing the ionically conductive electrolyte, as we noted above. We note, in this respect, appellant’s
discussion in the brief of the process of Shackle Example 1 wherein particles of V6O13 and carbon
particles are mixed with the use of tetrahydrofuran prior to adding the remainder of the cathode
composition without indication that the carbon particles coat the V6O13 particles (col. 11, lines 48-58).
Thus, on this record, we agree with appellant that there is no disclosure in Shackle with respect to
combining particulate cathode material, which can be conductive polymers (e.g., col. 4, line 67, to col.
5, line 1), with the same polymers when used as particulate conductive fillers as suggested therein (col.
5, lines 18-21), even in the presence of solvent as in Shackle Example 1, that would have reasonably,
and without speculation, suggested to one of ordinary skill in this art that the process of the reference
would have necessarily inherently resulted in the claimed particulate material encompassed by claim 1
and a cathode comprising at least such material in claim 2. Levy, 17 USPQ2d at 1464.
With respect to the two positions advanced in the answer in response to appellant’s arguments,
we find that the examiner has provided little technical reasoning and no evidence to support his
conclusions, which thus appear to us to be speculative in nature. Levy, supra.
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