Ex parte Maeda

Informative decision only: persuasive authority, not binding precedent. When the Examiner finds that the claimed and prior art compositions are identical (a finding the appellant does not contest), the burden shifts to the applicant to prove that the prior art composition does not inherently possess the claimed properties (here, Li site occupancy rate and specific surface area change after washing). Specification data comparing only the applicant's own examples and comparative examples, without a comparison of material made according to the cited reference, and without showing those examples represent the closest prior art, does not carry that burden. No prior Board precedent is named in the decision as directly addressed. For the examiner, a finding of compositional identity with the reference is enough to shift the burden, so the examiner need not prove the claimed properties exist in the reference. For the applicant, arguing that properties depend on processing conditions, or pointing to specification examples in which the same composition gave different properties, does not rebut the inherency showing; the applicant must supply evidence tied to the reference's own disclosure. The Board relied on In re Best, 562 F.2d 1252, 1255 (CCPA 1977), for the burden shift where claimed and prior art products are identical or substantially identical. LEGAL TEST OR STANDARD: Where the claimed and prior art products are identical or substantially identical, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. The sole issue was whether Appellants satisfied their burden of showing that Sunagawa's composition does not inherently possess the claimed properties. TRIGGERING FACTS: Claims 1 and 3 to a lithium-nickel composite oxide positive electrode active material were rejected under 35 U.S.C. 102(b) over Sunagawa. Appellants did not contest that Sunagawa's composition is the same as claimed. They argued compositional identity does not establish the claimed Li site occupancy rate and the specific surface area difference after washing, relying on Table 1 of the Specification, whose examples showed different properties under different processing conditions. Table 1 contained no comparison with material made according to Sunagawa, and no allegation that its compositions were the closest prior art. KEY QUOTE: "Appellants have not alleged or provided persuasive evidence that the compositions in Table 1 of the Specification represent the closest prior art." (p. 4) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed In re Best, 562 F.2d 1252, 1255 (CCPA 1977). PRACTICE TIP: To rebut an inherency-based anticipation rejection where compositional identity is conceded, submit comparative evidence that material made according to the reference's own disclosure lacks the claimed properties, rather than relying on specification examples of your own variants. Do not concede compositional identity unless you have such evidence.