Appeal 2007-2807
Reexamination 90/006,511
Patent 5,156,811
applicants to prove that the prior art does not possess the characteristics
relied on. In re King, 801 F.2d at 1327, 231 USPQ at 139. Here, the
Examiner’s reasoning (Answer 18:1-7) with regard to the absorption of
aerosol is logical and rational as reproduced below:
Appellant argues that Ferri does not teach capturing
aerosols, but it is the Examiner’s position that because the plug
material taught by Ferri is substantially the same as that taught
by Appellant, aerosols are inherently trapped. Appellant argues
that this cannot be an inherent property because the pore sizes
disclosed by Ferri are not suitable for pipetting. The pore sizes
being allegedly too small for pipetting has nothing to do with
inherently trapping aerosols. In fact, a smaller pore would
create greater contact area between any aerosol and the
hydrophilic particles within the pores.
The patentee’s assertion that the Examiner’s position is excessively
speculative is rejected. Prima facie inherency has been established.
There is no apparent reason why Ferri’s disclosed plug would not entrap and
absorb aerosol droplets in some pores, causing blockage, while other pores
remain open.
The patentee further argues that even the inventor himself did not
“know” whether the prototypes he constructed would work to resolve
aerosol contamination. However, the Examiner is correct that the stated
reasons why the claimed invention would have been obvious does not rely
on any attempt to resolve an aerosol contamination problem and that the
absorption of aerosol is merely an inherent property of a filter which would
have been obvious over the prior art references. None of the prior art has to
be specifically concerned about aerosol contamination, much less engaged in
an attempt to solve aerosol contamination. In any event, obviousness does
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