Appeal No. 2006-0791 Ex parte Gore Enterp. Holdings, Inc.
supported the finding that the material was the same, but identical or similar processing is just
one possible way to establish that a material is the same.
The question presented here is whether the examiner has shown sufficient similarity to
support an inference that the properties would be the same. We accord little weight to the Calis
declaration because it provides little analysis for its results, which are ambiguous at best.4 On
the other hand, the Frydrych declaration is entitled to some weight. Frydrych's relationship to
Gore and the lack of explanation make Frydrych's broader conclusions uncompelling, but the
narrower discussion of the differences between sample Ito and Gore membranes is more
persuasive.
Ultimately, the examiner has the burden of proof on the question of inherency. We
cannot say that a preponderance of the evidence shows structural or compositional similarity
such that the modified Ito membrane would necessarily have an ionic conductance rate of at least
5.1 µmhos/min. The fact that Ito and Gore has similar thicknesses is not dispositive because the
examiner has not shown that thickness alone accounts for the ionic conductance rate.
Consequently, the rejection of claims 1 and 35 and their dependent claims cannot be sustained.
Claim 29 does not have an ionic conductance rate limitation. Instead, Gore relies on the
140°C processing limitation and the "filling and thereby occluding said micropores" limitation to
respond to the rejection. Even assuming Ito's UHMWPE film cannot meet the temperature
4 It is at least a source of frustration that Calis measures ionic conductance rate when replicating Gore's
example 6, but not when replicating Ito's examples, since it is a limitation of many of Gore's patent claims as issued.
Since we accord little weight to the Calis declaration, we do not consider it to be compelling evidence that the Ito
reference is not enabling as Gore argues. The confusion appears to lie with Calis, not Ito. Cf. In re Epstein, 32 F.3d
1559, 1568-69, 31 USPQ2d 1817, 1823-24 (Fed. Cir. 1994).
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