Appeal 2007-2190
Application 10/229,489
This argument alone is not persuasive in overcoming the Examiner’s
rejection because it fails to address the Examiner’s finding that Patel does
disclose the use of metal halides such as cesium bromide and cesium iodide
in the disclosed radiation sensitive imaging film (Answer 3, referencing
Patel, cols. 17-18 and Table 3). When the Examiner has reason to believe
that a functional limitation in the claims may be an inherent characteristic of
the prior art, the Examiner may require the applicant to prove that the
subject matter shown to be in the prior art does not possess that
characteristic. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429,
1432 (Fed. Cir. 1997). See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433 (CCPA 1977) (Where patentability rests upon a property of the claimed
material not disclosed within the art, the PTO has no reasonable method of
determining whether there is, in fact, a patentable difference between the
prior art materials and the claimed material. Therefore, where the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily possess the
characteristics of the claimed product.). Appellants have not provided any
explanation or evidence which establishes that a converter layer containing
cesium bromide or cesium iodide as taught by Patel would not inherently
selectively absorb incident low energy photon radiation.
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