Appeal No. 2006-1820
Application No. 08/889,440
For their part, appellants argue that the examiner has not established a prima facie case of
obviousness because the examiner relies on assertions of “inherency” which have been traversed
by appellants but have not been substantiated by the examiner via the presentation of any
concrete evidence in support thereof.
While it is true that appellants make no substantive arguments as to the merits of the prior
art rejections in terms of whether the prior art describes what the examiner alleges it describes,
appellants have no duty to make any substantive arguments or present any other evidence of
non-obviousness until and unless the examiner, in the first instance, presents a prima facie case
of obviousness.
It is our view that the examiner has not presented such a prima facie case in the rejection
of claims 1, 3-9, 11-20, and 22-31 under 35 U.S.C. § 103 over either one of Misaka or Baumann
in view of the “examiner’s own experience,” or Official Notice. Too much of the rationale for
this rejection relies on “inherency.” For example, with respect to claim 1, the examiner contends
that the kinetic condition setting unit is “inherent in particle simulators such as Monte Carlo
simulators” (answer-page 51). The examiner contends that the claimed particle motion
computing unit which generates individual particles in accordance with the information set by
the kinetic condition setting unit and computes motion of the generated adsorbate particles… is
“inherent in particle simulators such as Monte Carlo simulators” (answer-page 51).
To establish inherency, the extrinsic evidence ‘must make clear that the missing
descriptive matter is necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.’ In re Robertson, 169 F.3d 743, 745, 49 USPQ2d
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