Appeal No. 2005-1245
Application No. 09/839,762
average particle size of 3 to 10 nm “inherently” satisfies the
claimed limitation (Answer, page 5). We disagree.
The initial burden of establishing a prima facie basis to
deny patentability rests with the examiner, and the examiner must
provide a basis in fact and/or technical reasoning to reasonably
support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the
applied prior art. See In re Robertson, 169 F.3d 743, 745, 49
USPQ2d 1949, 1950-51 (Fed. Cir. 1999); In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981). The examiner has not
supported, by fact and/or technical reasoning, the statement “for
the sake of argument” that only 2500 particles of GB ‘527 adhere
to form an agglomerate (Answer, page 4). Nor has the examiner
provided any support, by facts and/or technical reasoning, for
the statement that there “cannot be more than 2500 particles
adhering together to form an agglomerate” (Answer, page 5). In
contrast, appellants have submitted an attachment to the Brief to
establish that AEROSILŪ products, such as those exemplified by GB
‘527 (see page 7, ll. 1-5), contain agglomerates of about 10 to
200 microns.2 The examiner has failed to discuss appellants’
2See the Brief, page 4, citing Degussa, “Basic Characteristics of
AEROSILŪ,” Technical Bulletin No. 11, section 3.2, date unknown. See
also “CAB-O-SILŪ Fumed Silica in Coatings” brochure, pp. 1-21, date
4
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