Appeal No. 1996-1178
Application No. 08/160,324
blacks have the additional properties recited in claim 1, we
are of the view that appellants’ discovery of these additional
properties in known carbon blacks does not impart
patentability. Titanium Metals Corp. v. Banner, 778 F.2d 775,
780-82, 227 USPQ 773, 777-78 (Fed. Cir. 1985); In re Pearson,
494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974). When, as
here, the carbon blacks involved are either identical or
substantially identical and are from the same source, i.e., a
furnace , the burden is on appellants to prove that the3
exemplified carbon blacks of Negata do not possess
characteristics or properties attributed to the claimed carbon
blacks . In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 16584
(Fed. Cir. 1990). As stated in In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-434 (CCPA 1977):
3The furnace conditions employed in Negata are presumably
similar or the same as those disclosed in the specification
since the resulting carbon blacks have at least three
properties which are embraced by the claims.
4This is especially compelling in the present situation
since the claimed properties, which are not mentioned in
Negata, are a function of those claimed properties disclosed
in Negata as, e.g., shown by U.S. Patent 3,922,335 referred to
at page 7 of the specification.
4
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