Appeal No. 2006-0574
Application No. 09/878,405
Appellants argue that both references fail to teach or suggest each and every
element recited in the claims, namely there is no express teaching of the effective
degree of crosslinking limitation (Brief, pages 15-16; Reply Brief, page 3). As noted
above, appellant is correct that the examiner has admitted that Varughese does not
expressly disclose the effective degree of crosslinking limitation. However, mere
recitation of a property or characteristic not disclosed by the prior art does not
necessarily confer patentability to a composition or a method of using that composition.
See In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975). Where the
examiner establishes a reasonable belief that the property or characteristic recited in
the claims would have been inherent to the product or process, the burden of proof
shifts to appellants to show that this characteristic or property is not possessed by the
prior art. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990). We determine
that the examiner has established a “reasonable belief” by finding that the elastomeric
polymer containing epoxide groups and the active filler containing hydroxyl groups
recited in the claims on appeal encompass the specific materials taught by Varughese,
and the reaction conditions such as heating temperature, duration of heating, thorough
mixing and absence of crosslinking agents, are also encompassed by this reference
(e.g., see Varughese, page 1847, right column, and Table II, page 1848, Mix D).
Appellants argue that Varughese teaches that its process produces products that
have an unacceptably low degree of crosslinking, and thus one of ordinary skill in this
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