Appeal 2007-2807
Reexamination 90/006,511
Patent 5,156,811
For the foregoing reasons, the patentee has not shown error in the
rejection of Group I claims 1-9, 13, 14, 16, 17, 18, 19, and 22-29.
According to the patentee, Group II claims 10-12, 15, 21, 30, 33-36,
and 37 further require that aerosol droplets are absorbed by the hydrophilic
particles in the pores of the hydrophobic plug member thus blocking some of
the pores. That is not true with respect to claims 34-37. The patentee has
not directed us to any portion of those claims which has that requirement.
Accordingly, for the foregoing reasons, the patentee has not shown error in
the rejection of claims 34-37. As for the other claims of this group the
Examiner determined that it would be an inherent property of the plug
member disclosed in Ferri to absorb aerosol droplets which may be carried
into the porous plug, by the hydrophilic particles in some pores, resulting in
blockage of those pores while other pores remain unaffected. Rather than
submitting evidence to demonstrate that that is not true, the patentee simply
asserts that Ferri does not mention aerosols and the Examiner engaged in too
much speculation.
The fact that Ferri makes no mention of aerosols is of no moment in
establishing inherency. If there were express disclosure, inherency would be
a non-issue. As for the argument that the Examiner is speculating, it is
misplaced because it has long been recognized by our reviewing court that
the Patent and Trademark Office is not equipped to prove any assertion by
way of conducting experiments. In re King, 801 F.2d 1324, 1327, 231
USPQ 136, 139 (Fed. Cir. 1386). Therefore, a prima facie case for an
assertion may be established by logical theory and reasoning. When a prima
facie case of inherency has been established, the burden shifts to the
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