Appeal No. 2002-0741
Application No. 08/935,348
therefrom, are not entitled to the filing date of the earlier
filed ‘858 application. Paperless Accounting, Inc. v. Bay Area
Rapid Transit Sys., 804 F.2d at 665, 231 USPQ at 652-53. As a
consequence, Zacharias PCT ‘238 is available as prior art against
claims 1, 4-6, and 8-12 under 35 U.S.C. § 102(b).
In rejecting these claims as being anticipated by Zacharias
PCT ‘238, the examiner implicitly acknowledged that Zacharias PCT
‘238 does not expressly set forth that the adhesive thereof
possesses the properties called for in paragraph (c) of claim 1.
The examiner determined, however, that these properties “are
inherent in the adhesives set forth in Zacharias, since the
structure as claimed is taught thereby, see MPEP [§] 2112.01”
(answer, page 5).
Where an examiner has reason to believe that a property
asserted as establishing novelty may, in fact, be an inherent
characteristic of the prior art, the examiner possesses the
authority to require an appellant to prove that the subject
matter shown to be in the prior art does not possess the
characteristic relied on. See, for example, In re Swinehart, 439
F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971). However, before an
appellant can be put to that task, the examiner must provide some
evidence or convincing scientific reasoning to establish the
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