Appeal No. 1998-1411 Page 4
Application No. 08/562,316
composition, does not cause a claim drawn to that composition to distinguish over the prior art. In re
Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Therefore, where the prior art is
silent with respect to the property, but the examiner has reason to believe that the property may, in fact,
be an inherent characteristic of the prior art product, the examiner possesses the authority to require an
applicant to prove that the subject matter shown to be in the prior art does not, in fact, possess the
property. Id. However, before an applicant can be put to this burdensome task, the examiner must
provide enough evidence or scientific reasoning to establish that the belief that the property is inherent is
a reasonable belief. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990); Ex parte
Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986). It must be remembered that the
burden of establishing a prima facie case of unpatentability rests upon the examiner. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). It is therefore incumbent on the examiner to provide a
factual basis for the assertion of inherency which establishes its reasonableness. In the present case, the
Examiner has not discharged that burden.
The Examiner finds that Hill exemplifies polymethyl methacrylate homopolymers having
particular intrinsic viscosities (Examples 1, 2, 4, and 5). The Examiner also finds that Hill further
exemplifies a composition comprising a binder resin copolymer of 8 wt. % methyl methacrylate and 92
wt. % methacrylic acid with an average molecular weight of 70,000 (Example 3). The Examiner infers
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