Appeal No. 1998-2128
Application No. 08/628.281
Page 5
(brief, page 8). Again, we find such comments insufficient to
rebut the examiner’s prima facie case of anticipation in view of
the apparent similarities between the blend set forth in Morimoto
and appellants’ claimed mixture. We reiterate that with regard
to the functional limitations of claim 1 (transmission density)
and of claim 7 (polar character), when 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).
Absent such proof, we affirm the rejection.
III. The rejection of claims 1-11 under 35 U.S.C. § 103 as being
unpatentable over Morimoto
The examiner’s position is that the claimed ratio amount of
50:50 in appellants’ claim 5 would have been obvious to achieve
appellants’ results. (answer, page 6). Appellants argue that the
examiner does not provide a basis for such a conclusion. (brief,
page 9).
In the instant case, absent evidence to the contrary, we
find that the skilled artisan would have known to use the claimed
ratio amount recited in claim 5 because Morimoto suggests that
the ratio amount is a result effective variable for optimizing
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