Ex parte SODA et al. - Page 4







             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 m 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 m, 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            

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