Appeal No. 2005-2567
Application 10/032,606
resistance over a flow area of the anode, cathode or electrolyte to the extent that the flow of
oxygen ions through a region of the cell is regulated in proportion to the partial pressure of
hydrogen in that region.
On this record, we agree with appellants (reply brief, e.g., pages 2-3 and 5-6) that the
examiner has not established a prima facie case of anticipation or of obviousness of the
invention encompassed by claim 2 over Mieney because the examiner did not consider all of the
limitations of the claim, for indeed, the examiner did not do so (answer, e.g., pages 8-9). In this
respect, we fail to find in the examiner’s analysis of Mieney any consideration of the disclosure
thereof, such as at page 2, [0020] and [0021], vis-à-vis the strategies disclosed by appellants for
achieving a fuel cell capable of operating as required by the claim limitations as we interpreted
them above (specification, e.g., pages 11-14).
Thus, the examiner has not established that the claimed fuel cell is either in fact
inherently described to one skilled in the art by Mieney within the meaning of § 102(e), or
reasonably appears to be identical or substantially identical to the fuel cells of Mieney within the
meaning of § 103(a). Indeed, it is well settled that in order to establish that a claim element is
inherent in the single prior art reference, it must be shown that such limitation is necessarily
present in the description in the reference and that it would be recognized as such by one of
ordinary skill in the art, as “[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient. [Citations omitted.]” In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981); see also Transclean Corp. v. Bridgewood Serv., Inc., 290
F.3d 1364, 1372-73, 62 USPQ2d 1865, 1870-71 (Fed. Cir. 2002); MEHL/Biophile Int’l Corp. v.
Milgram, 192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305-06 (Fed. Cir. 1999); In re Robertson,
169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999); Continental Can Co. USA v.
Monsanto Co., 948 F.2d 1264, 1268-69, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991); In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986).
It is further well settled that the conclusion that it reasonably appears that a claimed
product and the product of the reference are identical or substantially identical must be based on
evidence. See In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 432-33 (CCPA 1977)
(“Because any sample of Hansford’s calcined zeolitic catalyst would necessarily be cooled to
facilitate subsequent handling, the conclusion of the examiner that such cooling is encompassed
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