Appeal No. 2002-1059
Application No. 09/051,933
(answer, page 6). This statement reflects that the examiner
believes it is the appellants’ burden to provide such evidence in
order to prove that their claimed resistivity characteristic is
not inherently possess by Takami’s negative electrode. In fact,
however, this belief is entirely contrary to well established
principles of law. As previously explained, it is the examiner’s
initial burden to provide a basis in fact and/or technical
reasoning to support his position that the here claimed
resistivity characteristic inherently and necessarily flows from
the teachings of Takami. Ex parte Levy, 17 USPQ2d at 1463-64.
Even if filling density and particle size are considered to
be the only factors which impact the resistivity of artificial
graphite, the examiner’s inherency position still would be
deficient. This is because Takami contains no teaching or
suggestion of a negative electrode which has each of the several
specific features that must be present in combination in order to
obtain the here claimed resistivity characteristic. With respect
to this point, we emphasize that an artisan would have to
selectively pick and choose from patentee’s very broad disclosure
the very specific combination of the negative electrode features
claimed by the appellants, namely, (1) artificial graphite as the
particulate carbon material, (2) a filling density in the range
5
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