Appeal No. 1999-0675 Page 3
Application No. 08/379,803
OPINION
Anticipation Rejection
The Examiner rejects all the claims as anticipated by McGinley. To anticipate, McGinley
must disclose every limitation of the claimed invention, either explicitly or inherently. See In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). The Examiner agrees
that McGinley does not explicitly disclose every limitation. However, the Examiner relies on a
theory of inherency. In such a situation, the Examiner must provide a sound basis for believing
that the claimed composition and that of McGinley are the same before the burden shifts to
Appellants to show that the they are indeed different. In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1657 (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 1254, 195 USPQ 430,
432-33 (CCPA 1977)(the assertion of inherency must be reasonable). It must be remembered
that the initial burden of establishing a prima facie case of unpatentability rests upon the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); Spada,
911 F.2d at 707 n.3, 15 USPQ2d at 1657 n.3; and In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984).
The Examiner argues that the process described by McGinley is the same as Appellants’
process and concludes that the product must then inherently share the same properties (Answer at
7). The problem is that this is not a case in which an identical starting material is subjected to the
same or similar process techniques. See Spada, 911 F.2d at 708, 15 USPQ2d at 1657-58 (“[W]e
think that it was reasonable for the PTO to infer that the polymerization by both Smith and Spada
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