Appeal No. 2002-1116
Application No. 09/213,544
possess the characteristic relied on. [58 CCPA at
1031, 439 F.2d at 212-13, 169 USPQ at 229.] This
burden was involved in In re Ludtke, 58 CCPA 1159,
441 F.2d 660, 169 USPQ 563 (1971), and is applicable
to product and process claims reasonably considered as
possessing the allegedly inherent characteristics.
Hence, it is applicant’s burden to prove that the subject
matter shown to be in the prior art does not possess the
characteristics relied on for patentability. However, we
determine that appellant has not met this burden for the
following reasons.
On page 9 of the brief, appellant indicates that he has
attempted to manufacture expanded graphite particles according
to the teachings described in Mototani, but submits that
Mototani does not describe, in sufficient detail, how to make
the expanded graphite “so as to enable one skilled in the art to
make samples with a definite known kerosene absorption”. This
is also indicated on page 2 of the Declaration of Paper No. 9.
Hence, the Declaration of Paper No. 9 sets forth examples of
several commercially available expanded graphites with their
corresponding kerosene absorption values. However, this
Declaration does not set forth an example representative of the
expanded graphites of Mototani.
From our perspective, the disclosure of Mototani is
presumed to be enabling because Mototani, a U.S. Patent, enjoys
a statutory presumption of validity, 35 U.S.C. § 282, and
enablement is a prerequisite to validity, 35 U.S.C. § 112, first
paragraph. Compare In re Spence, 261 F.2d 244, 246, 120 USPQ
82, 83 (CCPA 1958); see also In re Vaeck, 947 F.2d 488, 496
n.23, 20 USPQ2d 1438, 1444-45 n.23 (Fed. Cir. 1991)(“The first
paragraph of 35 U.S.C. 112 requires nothing more than objective
enablement. In re Marzocchi, 439 F.2d 200, 223, 169 USPQ 367,
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