Appeal 2006-2931
Application 10/447,009
having a crystalline melting point ranging from 35 to 90°C as measured by
differential scanning calorimetry at a key rate of 20°C per minute” (col. 1,
ll. 44 - 56).
Example 1 of Mudge describes a redox polymerization system that
employs a reactor charged to 750 psi, temperatures of about 50°C, and
sodium formaldehyde sulfoxylate (col. 6, ll. 1-6).
PRINCIPLES OF LAW
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). The 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, 1658 (Fed. Cir. 1990).
ANALYSIS
We determine that the Examiner has established a reasonable belief
that the nonwoven woven product of Mudge inherently possesses the
claimed characteristics by finding that the emulsion polymerization is
performed at a pressure (750 psi) and redox conditions that fall within the
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