Appeal 207-1263
Application 10/480,198
(2) Fukui, Fujii, and Kojima disclose various values for the amounts
of each ingredient in the resulting ceramic, while teaching the beneficial
properties or lack thereof as a function of the amount of each element
(Fukui, col. 6, l. 20-col. 8, l. 35; Fujii, col. 6, l. 14-col. 8, l. 10; and Kojima,
col. 3, l. 38-col. 5, l. 3).
As held by a predecessor of our reviewing court:
[I]t is elementary that the mere recitation of a newly discovered
function or property, inherently possessed by things in the prior
art, does not cause a claim drawn to those things to distinguish
over the prior art. Additionally, where the Patent Office has
reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on.
…
Whether 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. [Citation omitted].
In re Best, 195 USPQ 430, 433-34 (CCPA 1977) (footnote
omitted); see also In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82
(CCPA 1975); and In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657-
658 (Fed. Cir. 1990).
When presenting a comparison to establish unexpected results, it is
incumbent upon Appellants to show a comparison of the claimed subject
matter with the closest prior art. See In re Burckel, 592 F.2d 1175, 1179,
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