Appeal No. 2003-1529
Application No. 08/499,442
As stated by a predecessor of our reviewing court:
[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 possess the characteristic relied
on. [Citation omitted]. 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.4
For the foregoing reasons, we determine that the examiner has
reason to believe that the adsorber of Bauer possessed equilibrium
and mass transfer zones as well as a ratio Q within the claimed
range. Accordingly, the burden has shifted to appellant to prove
that the prior art Bauer does not possess these characteristics.
See In re Best, supra.
Appellant admits that the process disclosed in Bauer “may
inherently possess ‘a mass transfer zone’ and ‘an equilibrium zone’
as those terms are defined in the present application.” Brief,
4In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA
1977), quoting In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ
226, 229 (CCPA 1971)
6
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