Appeal Number: 2006-2391
Application Number: 10/311,513
materials, similar specific surface area, and similar water retention capacities
(Answer 4). The Examiner also recognizes that Ishizaki does not disclose the
claimed swelling power however, based upon the above stated similar properties,
the Examiner asserts that the swelling property is inherent in the composition of
Ishizaki (Answer 4).
Appellants have not disputed the Examiner's determination that the resins of
Ishizaki have similar materials, similar surface area, and similar water retention
capacity properties as the claimed invention. Appellants also have not challenged
the Examiner's position regarding the swelling property. Rather, Appellants argue
that the specific surface area of “no less than 0.050 m2/g” is not described by
Ishizaki (Br 4-5). As noted above, Appellants are correct that the Examiner has
admitted that Ishizaki does not expressly disclose the specific surface area of “no
less than 0.050 m2/g” limitation. However, mere recitation of a property or
characteristic not disclosed by the prior art does not necessarily confer patentability
to a composition or a method of using that composition. See In re Skoner,
517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975). Where the Examiner
establishes a reasonable belief that the property or characteristic recited in the
claims would have been inherent to the product or process, the burden of proof
shifts to Appellants to show that this characteristic or property is not possessed by
the prior art. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA
1977); In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657-58 (Fed. Cir.
1990). We determine that the Examiner has provided technical reasoning as to
why the composition of Ishizaki meets the presently claimed invention.
Specifically, the Examiner contends that Ishizaki describes compositions that
comprise similar materials, similar surface area, and similar water retention
capacities (Answer 4). However, Appellants have failed to meet their burden to
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