Appeal Number: 2006-2391
Application Number: 10/311,513
establish that the claimed characteristics are not possessed by the Ishizaki
reference.
Appellants further argue that the materials preferred by Ishizaki, as
illustrated in the examples, do not perform like the claimed invention (Br 5).
Where a prior art composition inherently possesses the capability of functioning in
the manner claimed, anticipation exists regardless of whether there was recognition
that it could be used to perform the claimed function. In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). When relying upon the
theory of inherency, the 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. See
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990). As stated
above, the Examiner has met the required burden in this case while Appellants
have failed to meet their burden to establish that the claimed characteristics are not
possessed by the Ishizaki reference.
Appellants also argue that the working examples of their specification
demonstrate superior properties (Br. 5). Appellants, however, fail to point to any
evidence indicating that the results were considered to be unexpected to one of
ordinary skill in the art. “It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in the
specification does not suffice.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684,
1687 (Fed.Cir.1995) (quoting In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191,
196 (Fed.Cir.1984)). The question here, we emphasize, is a question of evidence
and the burden is on the Appellants to show unexpected results. In re Johnson,
747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
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