Appeal No. 1997-0460
Application 08/207,990
coated with carbon particles (id., page 6). Finally, appellant contends that if, in the example of Shackle,
polyaniline (PAN) is employed instead of carbon particles, “the cathode paste would . . .contain a
mixture of V6O13 and PAN particles that are well mixed but it would not produce V6O13 particles . . .
coated with . . . PAN, as defined in claims 4, 5, and 27-30” (id., page 6).
In response to appellants’ arguments, the examiner finds that Shackle suggests the use of
“solvents with a boiling point greater than 80°C” pointing to col. 6, lines 3-19 of the reference, and
contends that such solvents “overlap” with those employed by applicant in reaching the conclusion that
“even if the propylene carbonate and triglyme of [Shackle] do not achieve 100% dissolution, any
amount of solubility results in a coated cathode material” (answer, page 4). We find that the portion of
Shackle pointed to by the examiner, col. 6, lines 3-19, discloses solvents which can be used in
preparing the ionically conductive electrolyte and does not suggest the use of these solvents to combine
cathode material and conductive filler which is the basis of the examiner’s inherency position as set forth
in the statement of the rejection.
Further in response to appellant’s arguments, the examiner advances two additional reasons in
the answer to support his position that the cathode material disclosed in Shackle is inherently coated.
First, the examiner points to the disclosure in Shackle, at col. 9, lines 54-63, as teaching that “the
cathode composition as well as the electrolyte layers are coated as liquids” which “suggests that the
cathode active material is at least partially coated with the other components of the mix” (id., page 5).
And, second, the examiner submits that when “the cathode material is cured with heat, the conductive
filler, as polyaniline, melts, or at least becomes more pliable,” and thus “[i]nherently, some of the
cathode material will be coated by polyaniline” (id., page 6).
In order to make out a prima facie case of obviousness on the basis that the claimed invention
is inherently disclosed in Shackle, the examiner has the burden of providing in the record evidence
and/or scientific reasoning to establish the reasonableness of his position that the processes disclosed in
the reference produced the claimed particulate material and a cathode comprising at least that material,
as the mere possibility or probability that such a result may be inherent in the processes of the reference
is not sufficient. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981); Ex
parte Levy, 17 USPQ2d 1461, 1462-64 (Bd. Pat. App. & Int. 1990), and cases cited therein; Ex
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