Already-Existing Characteristic in Prior Art Composition Is Obvious Under 35 U.S.C. 103

MARK TERRY, ESQ.

Ex parte Nakamura addressed a claimed nickel-and-tin composition said to prevent copper diffusion. The examiner found prior art disclosing the same composition, even though the earlier reference did not expressly recognize the claimed property.

When the claimed product and prior-art product are identical or substantially identical in structure or composition, the Patent Office may establish a prima facie case of anticipation or obviousness. The applicant then bears the burden of showing that the prior-art product does not necessarily possess the claimed characteristic.

The applicant did not submit evidence demonstrating that the prior-art composition lacked the asserted copper-diffusion property. The Board therefore treated the characteristic as inherent in the known composition and sustained the rejection.

The lesson is that a newly appreciated function or property does not automatically make an old composition patentably new. Applicants facing this issue should submit testing, expert evidence, or a declaration showing that the prior-art product does not necessarily possess the claimed characteristic.