Appeal No. 2005-0182
Application No. 09/783,392
characters or marks on the belt, would have been obvious to one of
ordinary skill in the art (id.).
Appellant first argues that “inherency” cannot be applied
under section 103 but is limited only to anticipation rejections
(Brief, page 4; Reply Brief, page 2). Then appellant argues that
the examiner has not established that the belt treatments in each
reference would necessarily produce less slippage in each and every
case (id.).
These arguments are not persuasive. As held 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 ... is applicable to
product and process claims reasonably considered as
possessing the allegedly inherent characteristics.3
3In 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); see also In re Skoner, 517 F.2d 947, 950,
186 USPQ 80, 82 (CCPA 1975)(Merely choosing to describe the
invention in terms of certain physical characteristics does not
render patentable an otherwise obvious method); In re Spada, 911
(continued...)
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