Appeal No. 2006-0902 6
Application No. 10/125,942
pictures and description of the existing physical structure
of the disclosed product. Here, we find no comparable
basis in the original disclosure to support appellants’
assertions of inherency regarding the claimed packing
fraction range.
Both Schering and Smithkline relate to the doctrine of
“inherent anticipation”. This doctrine is not applicable
here since the question before us is not whether a prior
art reference inherently anticipates a claimed feature but,
rather, whether appellants have adduced sufficient evidence
to support their assertion that the packing fraction range
at issue is an inherent characteristic of titanium powders
made by the process broadly disclosed in the instant
specification. In other words, the issue before us is a
question of fact which must be established by the
appellants. Generally, the standard of proof regarding
inherency issues is applied more rigorously where
applicants must satisfy the standard, as distinguished from
situations where the PTO relies upon an assertion of
inherency, e.g. “inherent anticipation”. Cf. In re Best,
562 F.2d 1252, 1254-55, 195 USPQ 430, 433-34 (CCPA 1977).
For the foregoing reasons, the decision of the
examiner is affirmed.
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