Appeal 2007-1943
Application 10/443,649
(SBr., pp. 7-8). According to Appellants, however, “Didchenko . . . is
deficient” (SBr., pp. 8 and 9).
The Examiner cited and followed In re Best, 562 F.2d 1252, 195
USPQ 430 (CCPA 1977). Particularly with regard to process claims, Best
instructs at 1254, 195 USPQ at 433:
This court, in In re Swinehart, 58 CCPA 1027, 439 F.2d 210,
169 USPQ 226 (1971), set forth the burden of proof required to
overcome an inherency rejection:
[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed by things
in the prior art, does not cause a claim drawn to those things to
distinguish over the prior art. Additionally, where the Patent
Office has reason to believe that a functional limitation asserted
to be critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the prior art,
it possesses the authority to require the applicant to prove that
the subject matter shown to be in the prior art does not possess
the characteristic relied upon. [58 CCPA at 1031, 439 F.2d at
212-13, 169 USPQ at 229.] This burden . . . is applicable
to product and process claims reasonably considered as
possessing the allegedly inherent characteristics.
In this case, we find sufficient evidence in Didchenko (and in Skripek,
U.S. Patent 4,075,085, patented February 21, 1978, cited by Didchenko
(Didchenko, col. 3, ll. 4-25) to particularly describe and define the known
hydrosulfurization process Didchenko employed to make and use its low
sulfur pitch feedstock precursor) to reasonably suggest that Didchenko either
made and used, or would have taught persons having ordinary skill in the art
how and why to make and use, “low PAH, low sulfur petroleum pitch
feedstock having a sulfur content less than 1 wt% and less than 15,000
mg/kg of PAH” (Br. App. Claims 1 and 11) by the same or substantially the
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