Appeal No. 1998-2128
Application No. 08/628.281
Page 4
between the blend of Example 7 and the mixture recited in
appellants’ claim 1 are notable.
In this context, with regard to the functional limitations
of claim 1 (transmission density) and of claim 7 (polar
character), we note that where the Patent Office has reason to
believe that a functional limitation asserted to be critical for
establishing novelty may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require
appellants to prove that the subject matter shown in the prior
art does not necessarily possess the characteristics relied on.
In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ 2d, 1429, 1432
(Fed. Cir. 1997); See also, In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433 (CCPA 1977); and Ex Parte Gray, 10 USPQ2d
1922, 1925 (Bd. Pat. App. & Int. 1989).
Here, appellants argue at length that Horie’s mixture is not
their claimed mixture. (brief, pages 7-8). However, we find that
Horie’s Example 7 concerns a blend of polyester A and polyester B
that appears to be identical or substantially identical to
appellants’ claimed mixture. In view of this similarity, proof,
as discussed above, is needed to obviate the prima facie case of
anticipation.
In absence of such proof, we affirm the examiner’s
rejection.
II. The rejection of claims 1-4, 6-11 under 35 U.S.C.
§ 102(e) as being anticipated by Morimoto
Appellants argue that the polyesters in Morimoto must have a
softening point of at least 10°C apart, and that one of the
polyesters is non-linear, while the other polyester is linear.
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