Appeal No. 2002-1116
Application No. 09/213,544
forth. Specifically, example 1 indicates that the carbon
material used is made from conventional artificial graphite
particles or expanded graphite particles which have been
prepared by introducing sulfuric acid “into between interlayers
of the artificial graphite used as starting material and heating
rapidly the graphite at a temperature of from 800° to 1000°C, to
expand greatly spaces between the interlayers of the graphite”.
We also observe that page 8 of appellant’s specification
beginning at line 8, indicates that the expanded graphite
additive preferably includes a natural graphite. This graphite
is soaked in sulfuric acid and nitric acid until each of the
graphite layers has been acid soaked therein. Once the graphite
layers are acid soaked by vacuum impregnation, the graphite is
ready for heat treatment at a temperature of approximately
1000°C, and within a range of from 850°C to 1100°C.
As noted on page 3 of the answer, the examiner states that
because the process for forming expanded graphite as disclosed
by appellant (as described in the previous paragraph) is similar
to the process disclosed by Mototani, the materials produced
would also be similar. We must agree for the following reasons.
We refer to the case of In re Best, 562 F.2d 1252, 1255,
195 USPQ2d 430, 433 (CCPA 1970). In this case, the court sets
forth the following:
[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed
by things in the prior art, does not cause a claim
drawn to those things to distinguish over the prior
art. Additionally, where the Patent Office has reason
to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the
authority to require the applicant to prove that the
subject matter shown to be in the prior art does not
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