Ex parte GURGANUS et al. - Page 5

          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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