Appeal No. 95-1100
Application 07/928,071
shifting the burden of proof to appellants.” See the Answer
at page 4.
Where there is adequate “reason to believe” that a
functional limitation or property asserted to be critical for
establishing novelty in claimed subject matter may, in fact,
be an inherent characteristic of the prior art, the Patent and
Trademark Office possesses the authority to require an
applicant to prove that the subject matter shown to be in the
prior art does not possess the characteristic relied on. In
re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 597 (CCPA 1980);
In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA
1971). Here, there is an inadequate factual basis supporting
a “reason to believe” that the specific parameters claimed,
i.e., the inherent viscosity and the porosity are inherent
characteristics of the prior art resins. That the prior art
resin composition may include a polyvinyl chloride having high
gel content combined with another polyvinyl chloride with no
gel content provides no basis or “reason to believe” that the
high gel content vinyl chloride resin has an inherent
viscosity and porosity as claimed while at the same time the
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