Appeal No. 2004-2294
Application 10/002,343
“claimed properties or functions are presumed to be inherent,” thus shifting the burden to
appellants to prove otherwise. The examiner points out that appellants have not presented any
evidence distinguishing the claimed catalysts over the references, and that the claimed new
function or property does not make the claimed catalysts again patentable (id., pages 16-17).
The examiner relies on In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir.
1990), and In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977).
We find that both Mitsui (e.g., cols. 1-2) and Nishino (e.g., cols. 1-2) would have
disclosed to one of ordinary skill in the art that the respective ceramic substrates would provide
improved properties over cordierite substrates for catalysts used for exhaust gas treatments and
thus, these references individually combined with Miyoshi would have suggested to one of
ordinary skill in this art to modify the catalysts for exhaust gas treatments disclosed by Miyoshi
by interchanging the cordierite substrate thereof with a ceramic substrate of each of Mitsui and
Nishino in the reasonable expectation of obtaining a catalysts with a ceramic substrate that at
least has the properties disclosed by Mitsui and Nishino. See In re Dow Chem. Co., 837 F.2d
469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent criterion for determination of
obviousness is whether the prior art would have suggested to one of ordinary skill in the art that
[the claimed process] should be carried out and would have a reasonable likelihood of success
viewed in light of the prior art. [Citations omitted] Both the suggestion and the expectation of
success must be founded in the prior art, not in the applicant’s disclosure.”); In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly suggested in any one or
all of the references. Rather, the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”).
We further find that while the combined teachings of the applied references may not have
expressly addressed the claimed properties of ceramic substrates, as appellants point out, the
combination of references nonetheless would have reasonably suggested to one of ordinary skill
in this art to use such substrates in place of the cordierite substrate of Miyoshi. It is well settled
that “the motivation in the prior art to combine [prior art] references does not have to be identical
to that of the applicant to establish obviousness.” In re Kemps, 97 F.3d 1427, 1429-30,
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