Appeal No. 2003-0090 Page 4
Application No. 09/006,379
which is capable or [sic: of] reducing reflectivity of another object (e.g. a base) that is external to
the stack.” (Brief at 6).
We agree that Schrenk does not expressly state that reflectivity is reduced in the manner
claimed. However, the mere recitation of a newly discovered property, inherently possessed by
a prior art product, does not cause a claim drawn to that product to distinguish over the prior art.
In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Therefore, where the prior
art is silent with respect to the property, but the examiner has reason to believe that the property
may, in fact, be an inherent characteristic of the prior art product, the examiner possesses the
authority to require an applicant to prove that the subject matter shown to be in the prior art does
not, in fact, possess the property. Id.
Here, the Examiner has reason to believe that the property is inherent based on the
similarity of the construction of the film to that claimed and disclosed in the specification. We
particularly note that the specification indicates that the base layer may include a plurality of
alternating layers of polymers with different indices of refraction (specification at 4, ll. 6-9).
Thus, the entire film may be multiple stacks of polymers of alternating indices of refraction.
That is what Schrenk teaches. Given that there is a reasonable basis to believe that the anti-
reflection property is inherently present in the film of Schrenk, it is reasonable to shift the burden
to Appellants to prove that, in fact, the prior art film does not necessarily or inherently possess
the characteristics of the claimed product. Best, 562 F.2d at 1254, 195 USPQ at 433. Whether
the rejection is based on “inherency” under 35 U.S.C. § 102, or on “prima facie obviousness”
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