Appeal No. 1997-4259
Application No. 08/259,474
With regard to claim 12 on appeal, we reach a different
result. Claim 12 is directed to a surgically implantable
prosthesis containing any filler material that is "capable of
being provided in a range of viscosities thereby permitting
the filler material to have a selectable viscosity." It is
the examiner’s position (answer, page 7) that the
triglycerides of Destouet are "clearly capable of being
provided in a range of viscosities." We agree with the
examiner. Peanut oil and sunflower seed oil that may be
subjected to different processing parameters or provided with
some form of thickening agent are inherently "capable of being
provided in a range of viscosities" (emphasis added), thus
permitting them to be produced with a selectable viscosity.
In a case such as this, where there is a reasonable basis
to conclude that a given property or characteristic for
establishing novelty in the claimed subject matter may, in
fact, be an inherent characteristic of the prior art product,
it is incumbent upon appellants to prove that the prior art
products do not in fact possess the characteristics relied
upon. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
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