Appeal No. 96-2432
Application No. 08/066,087
inherently possess characteristics attributed to the claimed
product. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433 (CCPA 1977). In such situations it is the examiner's
initial burden to demonstrate such a close correspondence
between the products of the applicant and the prior art that
it can be reasonably concluded that both products are
essentially the same in properties. As an example, the
examiner may demonstrate that both the claimed and prior art
products are produced by essentially the same process.
In the present case, we find that the examiner has failed
to make the case that the cured coatings of Ritter's EXAMPLE
21 inherently exhibit the claimed tensile strength. As
appreciated by the examiner, although the ester of EXAMPLE 21
is "in pure form," the ester was not prepared under solvent-
free conditions, as required by the appealed claims. Since
appellant's esters and Ritter's esters are prepared under
different conditions, it is incumbent upon the examiner to
establish that one of ordinary skill in the art would
reasonably expect the different reaction conditions to,
nevertheless, produce essentially the same product. Since the
-4-
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007