Appeal No. 2005-0822
Application No. 09/825,612
(Appeal brief at 5.) According to the appellants, “merely
pointing out the similarity in structure between the claim and
prior art” is insufficient to establish that the argon gas used
in the prior art method inherently or necessarily possesses the
recited characteristics. (Id.) As support for this contention,
the appellants rely on the holding in Crown Operations Int’l Ltd.
v. Solutia, Inc., 289 F.3d 1367, 1377-78, 62 USPQ2d 1917, 1922-23
(Fed. Cir. 2002). (Id.; reply brief filed on Mar. 18, 2004 at
2.)
The appellants’ position is not well taken. The court’s
decision in Crown was made in the context of patent litigation,
where the patent in suit must be accorded a presumption of
validity under 35 U.S.C. § 282 that may be overturned only by a
showing of clear and convincing evidence. Crown, 289 F.3d at
1377, 62 USPQ2d at 1923. As the appellants may know, the
evidentiary burden of proving invalidity of an issued patent
rests on the party asserting it. Crown, 289 F.3d at 1377-78, 62
USPQ2d at 1923.5
No such presumption of validity under 35 U.S.C. § 282 exists
in the context of patent prosecution before the United States
5 Moreover, the court in Crown found it significant that
Crown’s inherency argument rested on the assumption that the
prior art reference disclosed “the use of TiO2, even though it
specifie[d] TiOx, where x is greater than 1.0 but less than 2.0”
(emphasis added). Crown, 289 F.3d at 1377, n.2, 62 USPQ2d at
1923, n.2.
5
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