Appeal No. 95-2533
Application No. 08/018,125
contained therein. This is particularly the case since the
French patent states that during firing (when the wad is
subjected to propellant forces) the fluid wad is “non-
compressible or nearly so, [and] is only capable of spreading
without shrinking in volume” (translation, page 6, lines 3 and 4;
emphasis ours).
As to the appellant’s “challenge” of the examiner’s position
that the wall portion of the wad or obturator B’ of the French
patent can be considered to be “non-porous,” where, as here,
there is a sound basis to believe that the critical function for
establishing novelty in the claimed subject matter may, in fact,
be an inherent characteristic of the prior art device, it is
incumbent upon an appellant to prove that the prior art device
does not in fact possess the characteristics relied on. See,
e.g., In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990); In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 597
(CCPA 1980); In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430,
433 (CCPA 1977); In re Glass, 474 F.2d 1015, 1019, 176 USPQ 529,
532 (CCPA 1973); and In re Ludtke, 441 F.2d 660, 664, 169 USPQ
563, 566-67 (CCPA 1971).
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