Appeal No. 2006-1738 Page 8
Application No. 10/059,564
enough to, the range utilized to produce the claimed compositions (“between 516 and
1377 kg/cm2”), leading to the expectation that the compacted compositions would
exhibit similar properties. We recognize that this case differs from Titanium, since it is
not the claimed range which overlaps, but rather it is an overlap in the conditions which
were utilized to produce the claimed range. Nonetheless, the principle is applicable
since the claimed density would be reasonably expected to result from applying the
pressure disclosed in Minagawa.
Once a prima facie case is established, the burden shifts to the applicants “to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.” In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ
594, 596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977). Appellant did not rebut the examiner’s allegation that a pressure of
“about 500 kg/cm2” would produce a composition of the claimed density. Rather than
explain why Minagawa’s pressure condition would not achieve the claimed density,
appellant stated that its disclosure would not have led the skilled worker to investigate
the parameter of density. Appeal Brief, page 9, lines 1-3. But investigation is not
required in these circumstances because the density would have been an inherent
property of carrying out the process described in Minagawa for producing bait tablets.
Thus, absent any evidence to the contrary, we agree with the examiner that, when a
pressure described in Minagawa is utilized to compact a cellulose composition, a
resulting density that meets, or overlaps with, the limitation of claim 1 would reasonably
be expected.
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