that their size and shape would be the same as those particles prepared by Kiyota.
Furthermore, we find that Sample 3 in Table 4, on page 2 of the Declaration
discloses spherical metal particles having almost the identical size, an average
particle size of 7.3 µm and a tap density ratio of 51.1%. We, accordingly, conclude
that the particles disclosed by Kiyota and taught in the Declaration, having the same
size and shape and prepared according to the disclosure of Kiyota, necessarily share
other physical characteristics. Hence, it is reasonable to conclude that Kiyota’s
particles having a particle size of 7.1 µm, also have a tap density ratio falling within
the scope of the claimed subject matter.
Based upon the above analysis and in accordance with our findings, supra, we
conclude that the properties of “tap density ratio" are inherently possessed by the
prior art composition to Kiyota. The mere recitation of a newly discovered function or
property inherently possessed by things in the prior art does not cause a claim drawn
to those things to distinguish over the prior art. Rather, the burden of proof shifts
to appellants to prove that the subject matter shown to be in the prior art does not
necessarily produce the identical or substantially identical characteristics. In re
Fitzgerald 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562
F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Hence, we will sustain
the rejection on the grounds of anticipation.
The Rejections under 35 U.S.C. § 103
Initially, we consider the rejection of claim 3 over Kiyota in view of the admitted
prior art and Klein. We sustain this rejection. Appellants stated, that claims 1 and 3
4
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