Appeal No. 2002-1059
Application No. 09/051,933
technical reasoning to reasonably support a determination that
the allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art. Ex parte Levy, 17 USPQ2d
1461, 1463-64 (Bd. Pat. App. & Int. 1990).
With these legal principles in mind, we view the examiner’s
inherency position as deficient with respect to his statement
that “it has been established that resistivity is a function of
filling density and particle size [i.e., of the artificial
graphite disclosed by Takami and claimed by the appellants]”
(answer, page 5). While filling density and particle size may be
factors which impact the resistivity characteristic of artificial
graphite, the record before us is insufficient to establish that
these are the only factors which impact resistivity. Therefore,
even assuming Takami discloses a negative electrode of artificial
graphite having a filling density and particle size within the
here claimed ranges, it would not be appropriate on the record
before us to consider such an electrode to inherently possess the
resistivity characteristic defined by the appealed claims.
Concerning this issue, the examiner in responding to an
argument by the appellants states that “there has been no
evidence placed on the record that resistivity is dependent on
any factors other than filling density and particle size”
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