Appeal 2007-1375
Application 10/327,300
supercritically dried with carbon dioxide to form organic aerogels
(Maldonado 1199); and
(4) Maldonado discloses that a very small amount of platinum
particles (“around 0.5%”) present in the aerogel matrix produces a
large increase in the pore volume (Maldonado 1203; see Table 5;
1204, right column).
Under § 102(b), anticipation requires that the prior art reference
disclose, either expressly or inherently, every limitation of the claim. See
In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986). The
Examiner, if relying upon the theory of inherency, must provide a basis in
fact and/or technical reasoning to reasonably support a determination that
the allegedly inherent characteristic necessarily flows from the teachings of
the prior art. See In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949,
1950-51 (Fed. Cir. 1999); and In re Oelrich, 666 F.2d 578, 581-82,
212 USPQ 323, 326 (CCPA 1981). The meaning of the word “about” is
dependent on the facts of the case, the nature of the invention, and the
knowledge imparted by the totality of the earlier disclosure to those skilled
in the art. See Eiselstein v. Frank, 52 F.3d 1035, 1040, 34 USPQ2d 1467,
1471 (Fed. Cir. 1995). When relying on numerous references, it is
incumbent upon the Examiner to identify a sufficient reason or detailed
analysis of why the references should be combined. See In re Mayne,
104 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir. 1997).
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