Appeal 2007-4331
Application 10/400,742
The Examiner points to Merkel’s description of a ceramic honeycomb
having a median pore size of about 5-40 micrometers and the further
disclosure of a honeycomb wherein about 30 to about 100 percent of the
total porosity comes from pores having a diameter greater than 10
micrometers (Answer 3; Merkel, col. 6, ll. 21-34) as furnishing an
anticipatory disclosure.
Appellants contend that “stating only the lower limit and the median,
does not define the distribution” of the honeycomb pore sizes as required in
all of Appellants’ appealed claims (Br. 4).
Have Appellants identified reversible error in the Examiner’s stated
anticipation rejection by their assertion that their narrower claimed pore size
distribution requiring more than 85 percent of the porosity of the ceramic
material to come from pores having a size between 5 and 30 micrometers is
not described by the average pore size disclosure and open ended range of
pore sizes greater than 10 micrometers as disclosed by Merkel? We answer
that question in the affirmative and we reverse the stated anticipation
rejection, on this record.
The factual determination of anticipation requires the disclosure in a
single reference of every element of the claimed invention, either explicitly
or inherently. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997). It is also well-settled that an Examiner may shift the
burden to Appellants by showing how a prior art structure substantially
corresponds to a claimed structure such that it would be reasonable to
presume that the prior art structure would also possess a claimed property
employing an inherency theory. See In re Schreiber, 128 F.3d at 1478, 44
USPQ2d at 1432. Here, however, the Examiner has not reasonably
3
Page: Previous 1 2 3 4 5 Next
Last modified: September 9, 2013