Appeal No. 2002-1059
Application No. 09/051,933
Rather than reiterate the respective positions advocated by
the appellants and by the examiner concerning the above noted
rejection, we refer to the brief and reply brief and to the
answer for a complete exposition thereof.
OPINION
For the reasons which follow, this rejection cannot be
sustained.
A pivotal aspect of the examiner’s rejection is his position
that the negative electrode of Takami would inherently possess a
volume resistivity not exceeding 5.0 x 10-3ohm.cm as required by
each of the independent claims on appeal. More specifically, the
examiner argues that:
since it has been established that resistivity is a
function of filling density and particle size, the
artificial graphite of Takami et al. would inherently
have a resistivity not exceeding 5 x 10-3 Scm at the
filling densities and particle sizes disclosed by the
reference that fall within the claimed ranges [answer,
page 5].
This inherency position is deficient in a number of respects.
It is first appropriate to emphasize that the initial burden
of establishing a prima facie basis to deny patentability rests
upon the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). Thus, if relying upon the theory of
inherency, the examiner must provide a basis in fact and/or
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