Appeal 2007- 0629
Application 10/419,765
II. DISCUSSION
A. Issue
The Examiner finds that while Vair does not explicitly teach the
claimed air flow resistance of 200-4000 MKS Rayls as required by claim 30,
it is reasonable to presume that the property is inherent (Answer 5). The
Examiner further finds that avoidance of complete melting of the fibers as
required by claim 30 inherently occurs in Vair (Answer 4).
Appellants contend that the Examiner has not adequately supported
these findings under the theory of inherency and, therefore, the Examiner
has failed to show that each and every limitation is taught or suggested in the
prior art (Br. 9-18).
The dispositive issue, therefore, is: Does the Examiner’s technical
reasoning support a reasonable belief of inherency with regard to the air
flow resistance property and/or the properties flowing from an avoidance of
complete melting?
B. Principle of Law
Where the Examiner has reason to believe that a claimed property
may, in fact, be an inherent characteristic of the prior art product, an
Examiner possesses the authority to require applicant to prove that the
subject matter shown to be in the prior art does not in fact possess the
property. In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 433 (CCPA
1977). However, before applicant can be put to this burdensome task, the
Examiner must provide enough evidence or scientific reasoning to establish
that the Examiner’s belief that the property is inherent is a reasonable belief.
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