Appeal 2007-1098
Application 10/026,059
1 appealed claims and supporting specification indicate that reduced thermal drift is
2 achieved “by increasing a thermal mass of the electronic component” (Claim 1,
3 Claims Appendix) and persons having ordinary skill in the are reasonably would
4 have expected Luce’s potting material to increase a thermal mass of an electronic
5 component of Luce’s Claim 2 watch comprising watch components; and (2)
6 persons having ordinary skill in the art reasonably would have expected metal and
7 ceramic structures as generically described in this specification and Luce’s potting
8 material are like compositions with common elements having common thermal
9 characteristics.
10 Application of Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977), teaches at
11 1254-55, 195 USPQ at 433:
12 This court, in In re Swinehart, . . . 439 F.2d 210, 169 USPQ 226
13 ([CCPA ]1971), set forth the burden of proof required to overcome an
14 inherency rejection:
15
16 [I]t is elementary that the mere recitation of a newly discovered
17 function or property, inherently possessed by things in the prior
18 art, does not cause a claim drawn to those things to distinguish
19 over the prior art. Additionally, where the Patent Office has
20 reason to believe that a functional limitation asserted to be
21 critical for establishing novelty in the claimed subject matter
22 may, in fact, be an inherent characteristic of the prior art, it
23 possesses the authority to require the applicant to prove that the
24 subject matter shown to be in the prior art does not possess the
25 characteristic relied on. [439 F.2d at 212-13, . . . 169 USPQ
26 at 229.]
27
28 This burden was involved in In re Ludtke, 441 F.2d 660, . . .
29 169 USPQ 563 ([CCPA ]1971), and is applicable to product and
30 process claims reasonably considered as possessing the allegedly
31 inherent characteristics.
32
17
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