Appeal No. 2005-0295
Application 10/151,586
further find that contrary to the data in specification Table 1, “ethylhexylester of lactic acid” in
fact has a EA/C of 0.09 and thus falls within claims 1 and 11.
The examiner responds that appellants have identified an inherent physical property,
EA/C and ED/C, of the limited number of plasticizers of Abdel-Malik, most of which are listed
in specification Table 1 (answer, page 3). The examiner contends that the identification by
appellants of an additional beneficial result with the same plasticizers used by Abdel-Malik does
not establish the patentability of the appealed claims (id., pages 3-4).
Appellants reply that the majority of the plasticizers disclosed in col. 12 by Abdel-Malik
are outside of the plasticizers selected based on EA/C and ED/C in the claimed invention
encompassed by the appealed claims, contending that the reference discloses both organic and
inorganic plasticizers, and most of the grouping of organic plasticizers disclosed at cols. 12-13
are outside of the claims (reply brief, unnumbered pages 2-3). On this basis, appellants further
submit that the concept of inherency does not apply to the facts on appeal (id., unnumbered page
3). Appellants further argue that there is no direction to EA/C and ED/C in Abdel-Malik, and
that it is error to compare some of the plasticizers of specification Table 1 to the plasticizers of
the reference to determine the patentability of the claimed invention encompassed by the claims
(id., unnumbered pages 3-4).
The alternative grounds of rejection under §§ 102(b) and 103(a) require separate
consideration, and accordingly, we consider the application of Abdel-Malik to appealed claims
1 and 11 on this basis. See generally, In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655,
1657 n.3 (Fed. Cir. 1990). Furthermore, consideration of the claimed method encompassed by
claim 1 and the claimed product encompassed by claim 11 also requires separate consideration.
Cf. In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103-04 (CCPA 1976) (“These claims are
cast in product-by-process form. Although appellants argue, successfully we have found, that the
[reference] disclosure does not suggest . . . appellants’ process, the patentability of the products
defined by the claims, rather than the processes for making them, is what we must gauge in light
of the prior art.”).
The examiner has the burden of establishing a prima facie case of anticipation under
§ 102(b) in the first instance by pointing out where, as a matter of fact, each and every element
of the claimed invention, arranged as required by the claim, is described identically in a single
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