Appeal 2007-1024
Application 10/231,144
(Appeal Br. 8-9).
Where the PTO establishes a prima facie case of anticipation based on
inherency, the burden shifts to Appellant to “prove that the subject matter
shown to be in the prior art does not possess the characteristic relied on.” In
re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 229 (CCPA 1971).
Under the principles of inherency, if a prior art device in its normal and
usual operation will necessarily functions in accordance with Applicant’s
claimed limitations, then the claim will be considered anticipated by the
prior art. See, In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed.
Cir. 1986).
The Examiner found that Tomiyama exemplifies a positive electrode
formed with PVDF and polyacrylonitrile, which are described in Applicant’s
specification as preferred binders A and B. (Answer 11 citing paragraph 70
of Tomiyama). The Examiner further found that Tomiyama’s mixture of
binders satisfies the equation θB – θA ≥ 15o as Tomiyama exemplifies a
composition having Applicant’s preferred mixture of binders A and B. The
Examiner has provided a sufficient evidentiary basis for concluding that
Tomiyama’s binders for forming a positive electrode inherently satisfies the
equation θB – θA ≥ 15o.
The Examiner also found that Tomiyama’s exemplified positive
electrode employed carbon black in the same concentration as that claimed.
(Answer 5). Indeed, Tomiyama exemplifies the use of carbon black
(acetylene black) in combination with PVDF and polyacrylonitrile
copolymers. (Tomiyama, ¶ 70). Tomiyama’s carbon black is 0.1 μm, which
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