Appeal No. 2001-2132 5
Application No. 08/985,443
one would expect that filler is absent from the article.
As to the “stiffness of from 10-100 Gurley,” it would have been well known to the
person skilled in the art that Gurley is a measure of force required to bend paper or paper
substitutes. The force required to bend paper or a paper substitute is a function of the
material itself. Accordingly, if one were to choose a high density polyethylene having a
given length and thickness within the scope of the claimed subject matter, e.g., Examples 5
and 6, the specific parameters chosen would be determinative of the Gurley stiffness
measured and accordingly a function of the material itself. Stated otherwise, as the only
requirement of the claimed subject matter is directed to a polyethylene having a specific
density range and thickness as taught by Examples 5 and 6, and no other parameters are
required to determine Gurley stiffness, it follows that Gurley stiffness is a characteristic of
the material itself. It is well settled that when appellants’ product and that of the prior art
appears to be identical or substantially identical, the burden shifts to the appellant to
provide evidence that the prior art product does not necessarily or inherently possess the
relied-upon characteristics of appellant’s claimed product. In re Fitzgerald, 619 F.2d 67,
70, 205 USPQ 594, 597 (CCPA 1980); In re Best, 562 F.2d 1252, 1255-56, 195
USPQ 430, 433-34 (CCPA 1977). Furthermore, the discovery of a new property even
when that property is unobvious from the prior art, cannot impart patentability to claims
directed to a known composition. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990). Based upon the above findings of fact and analysis, we conclude
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