Appeal No. 96-0126
Application 07/942,400
in appealed claim 1. Nevertheless, because the ingredients
and concentrations encompassed by this claim correspond to the
ingredients and concentrations disclosed by Ma, it is fair to
believe that patentee’s compositions contain these recited
characteristics of the here claimed compositions, and it is
fair to require the appellants to shoulder the burden of
proving otherwise. Whether the rejection is based on
?inherency? under 35 USC § 102, on ?prima facie obviousness?
under 35 USC § 103, jointly or alternatively, the burden of
proof is the same, and its fairness is evidenced by the
inability of the Patent and Trademark Office to manufacture
products or to obtain and compare prior art products. In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977).
In light of the foregoing, we hereby sustain the
examiner’s § 103 rejection of claim 1 as being unpatentable
over Ma.
For analogous reasons, we also sustain the examiner’s §
103 rejection of independent claim 1 and dependent claims 2
through 8 as being unpatentable over Ma and Konig-Lamer in
view of Seaman. The appellants’ arguments concerning the
Konig-Lamer and Seaman references are not well taken. In any
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