Appeal No. 2003-0667 Page 10
Application No. 09/514,699
evidenced by the Exxon Bulletins. The Exxon Bulletins are applied as evidence that the working
liquid developer inherently has the dielectric properties of claim 4 (Answer at pp. 9-10).
Appellants argue that the Examiner has pointed to no teachings in the references wherein
the dielectric property is illustrated or would have been rendered obvious (Amended Brief at p.
15). A reference, however, need not expressly disclose nor have rendered obvious a property
which is inherently present. “[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.” In re Best, 562 F.2d 1252, 1254, 195 USPQ
430, 433 (CCPA 1977)(quoting In re Swinehart, 439 F.2d 210, 169 USPQ 226 (1971)). Here,
the Examiner provides detailed reasoning and evidence supporting inherency. Where, as here,
the Examiner has provided a reasonable basis to conclude the property is inherently present, the
burden shifts to Appellants to prove that there is a patentable difference. Best, 562 F.2d at 1255,
195 USPQ at 432-33 (CCPA 1977). Appellants have not met their burden in rebuttal.
Claims 5, 7, and 9
With respect to claims 5, 7, and 9, Appellants simply recite the limitations of the claims
and argue that the Examiner has not referred to teachings in the references with regard to these
limitations. We are not persuaded by Appellants’ broad brush arguments because the Examiner
has made specific findings of fact for each of the limitations. See the Answer at pages 27-30.
Appellants fail to address the specific findings of the Examiner and, therefore, have failed to
sufficiently rebut those findings.
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