Appeal 2007-3414
Application 10/194,032
Where the Examiner has reason to believe that a claimed property
may, in fact, be an inherent characteristic of the prior art product, the
Examiner possesses the authority to require an applicant to prove that the
subject matter shown to be in the prior art does not, in fact, possess the
property. In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 433 (CCPA
1977). However, before an applicant can be put to this burdensome task, the
Examiner must provide enough evidence or scientific reasoning to establish
that the Examiner’s belief that the property is inherent is a reasonable belief.
Ex parte Levy, 17 USPQ2d 1461, 1464-65 (BPAI 1990); Ex parte Skinner,
2 USPQ2d 1788, 1789 (BPAI 1986).
In the present case, the Examiner has not provided the required
evidence or scientific reasoning to support the belief that the primary lithium
particles of Zhen will necessarily, in all cases, be pore free as claimed. The
bald statement that “[a]s shown from the TEM micrograph, Fig. 1, the
primary particles are essentially ‘pore free’” does not provide the necessary
support for the finding. This micrograph shows particles of zirconia, not
lithium ferrite. No explanation of how this micrograph relates to lithium
ferrite is provided. Nor has the Examiner explained what in the micrograph
shows the particles as free of pores.
The Examiner has not established that all manners of poly-foam
processing lithium ferrite necessarily result in pore free particles. In general,
a limitation is inherent if it is the “natural result flowing from” the explicit
disclosure of the prior art. Schering Corp. v. Geneva Pharms.,
339 F.3d 1373, 1379, 67 USPQ2d 1664, 1669 (Fed. Cir. 2003). “Inherency
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