Appeal No. 2000-0822
Application 09/037,555
the rejection is based on ‘inherency’ under 35 USC 102, on ‘prima facie obviousness’ under 35
USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by
the PTO’s inability to manufacture products or to obtain and compare prior art products.
[Footnote and citation omitted.]”).
Accordingly, we again evaluate all of the evidence of anticipation found in Kawata with
appellants’ countervailing evidence of and argument for non-anticipation in the brief and reply
brief with respect to appealed claims 1, 49 and 53. See generally, Spada, 911 F.2d at 707 n.3, 15
USPQ2d at 1657 n.3. We recognize that, as appellants point out (brief, page 10; reply brief, page
unnumbered page 5), Kawata describes the openings in the surface of the carrier particle as a
“recess” and not a “pore” as in the appealed claims. However, this fact alone does not patentably
distinguish the claimed product over that of the reference because, as we found above, one of
ordinary skill in this art would have recognized that the “recess” of Kawata can be termed a
“pore” in keeping with the common, dictionary meaning of the term.1 See In re Skoner, 517 F.2d
947, 950, 186 USPQ 80, 82 (CCPA 1975). (“Appellants have chosen to describe their invention
in terms of certain physical characteristics . . . . Merely choosing to describe their invention in
this manner does not render patentable their method which is clearly obvious in view of [the
reference]. [Citation omitted.]”).
We have carefully considered appellants’ arguments that “[a]lthough Kawata recites that
the recessed portions of the core are filled with resin, the solution coating technique of Kawata
cannot be used to fill the pores of a carrier core . . . [because] a substantial portion of the pores is
filled with solvent” (brief, pages 8-9), and that “it is Appellants’ position that, despite the
statement that the recessed portions are filled, upon review of the reference as a whole, it is clear
that the recessed portions are not actually filled with the resin . . . [because] to coat the core
particles, Kawata teaches applying a solution of the resin composition to the core particles” and
since “a substantial portion of the coating solution comprises solvent instead of resin, a
1 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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