Appeal 2006-3082
Application 10/372,669
“A patent is invalid for anticipation if a single prior art reference
discloses each and every limitation of the claimed invention. Moreover, a
prior art reference may anticipate without disclosing a feature of the claimed
invention if that missing characteristic is necessarily present, or inherent, in
the single anticipating reference.” Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373, 1377, 67 USPQ2d 1664, 1667 (Fed. Cir. 2003) (internal
citations omitted). See also SmithKline Beecham Corp. v. Apotex Corp., 403
F.3d 1331, 1343 74 USPQ2d 1398, 1406 (Fed. Cir. 2005). “[A]fter the PTO
establishes a prima facie case of anticipation based on inherency, the burden
shifts to appellant to ‘prove that the subject matter shown to be in the prior
art does not possess the characteristic relied on.’ In re Swinehart, 439 F.2d
210, 212-13, 169 USPQ 226, 229 (CCPA 1971).” In re King, 801 F.2d
1324, 1327 231 USPQ 136, 138 (Fed. Cir. 1986).
In this case, Horino describes each component recited in claim 2,
including a powdery base and aluminum hydroxide adhered to it (FF 8-10).
Based on the identity of components (FF 8, 9), of structure (metal hydroxide
“coated” powder of Horino compared to aluminum hydroxide “adhered”
powder of claim 2; (FF 1, 9), and function (correcting skin color and
blemishes) (FF 5, 7) between the compositions (Answer 3-4), we conclude
that it is reasonable to presume that Horino’s identical composition would
also have “a formation of spherically shaped particles and mesh-like
formation of string shaped particles in said adhered aluminum hydroxide” as
recited in claim 2.
Furthermore, Horino characterizes its composition as having a
honeycombed structure with fine particles, which is differently worded than
claim 2, but appears to be equivalent to its limitation of “a formation of
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