Appeal No. 2003-1398
Application 09/472,800
applicant’s invention and its relation to the prior art. See In re Prater, 415 F.2d 1393, 1404-05,
162 USPQ 541, 550-51 (CCPA 1969).”).
The examiner finds that Hajto discloses high density ammonium nitrate prills at col. 4,
lines 1-33, as well as col. 8, line 39, and points to Examples 7-12 in Hajto Table as having at
least 5% oil capacity (answer, pages 3 and 7-8). The examiner relies on col. 3, lines 1-6, of
Tucker for the proposition that “using small particles, would have been obvious,” and further
finds that Cescon “teach regarding fines details, e.g., [Richard], at col. 5, lines 49-60, teach the
size of miniprills, and this substantially overlaps the size claimed herein” (id., pages 3 and 7).
On this basis, the examiner finds that it would have been obvious “to use the taught most
desirable density of miniprills, which would have the corresponding size as claimed” and to use
“[v]ariations of these notoriously well known parameters to obtain a satisfactory ANFO
explosive” by optimizing result effective variables (id., pages 3-4). Thus, the examiner
concludes (id., page 4) that the claimed products and those in the prior art appear to be the same
or only slightly different and thus the properties recited would appear to be inherent, thus shifting
the burden to appellants to patentably distinguish the claimed products from those of the prior
art, relying on the authority of In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985), and In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977).
Appellants submit that there is a difference in porosity between the claimed porous prills
and the high density prills of Hajto as the latter are relatively non-porous, which carries with it
low oil absorption as measured by appellants, and thus the prills of the reference do not
necessarily or inherently satisfy the limitations of the appealed claims (brief, pages 7-8; reply
brief, pages 2-4). Appellants point out that the fuels and method of determining oil absorption
capacity used by Hajto differ from that required by the appealed claims (reply brief, page 3).
Appellants further point out differences between the appealed claims and the fines of Tucker, the
emulsion phase of Cescon which does not provide an ANFO, and the miniprills of Richard (id.,
pages 9-10).
In light of the positions of the examiner and appellants, we determine that the examiner
has not established a prima facie case of obviousness with respect to inherency on the authority
of Thorpe and Best, or that one of ordinary skill in this art would have modified or replaced the
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