Appeal No. 2006-1218
Application No. 10/601,884
alternatively, the burden of proof is the same, and
its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior
art products. Id.
Moreover, to support a rejection of inherency an 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. Ex parte Levy, 17 USPQ2d 1462, 1464 (Bd.
Pat. App. & Int. 1990).
In Appellants’ corrected appeal brief filed August 17,
2005, Appellants have presented only one argued distinction
between the Sellers’ patent and their claims.1 Appellants solely
argue that Sellers teaches that loss of the sintering aid, LiF,
is to be avoided by heating for not more than about 30 minutes.
In contrast, Appellants state that their claims require that the
spinel product be essentially devoid of the sintering aid. It
is further noted that Appellants have not set forth any
declaration or affidavit of record to rebut the Examiner’s
finding that Sellers’ product is “essentially devoid of a
1 Appellants submitted a brief on June 20, 2005 that was non-compliant with
the New Rules of Practice before the Board of Patent Appeals and Inter-
ferences, which took effect September 13, 2004. Therefore, in assessing the
issues on appeal, we consider only this corrected brief of August 17, 2005.
4
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