Appeal No. 1995-2036
Application 07/920,009
polyesters containing a relatively high proportion of core-shell polymer (about 67 to 74
percent by weight), we find that the claimed and prior art thermoplastic compositions
reasonably appear to be identical or substantially identical. A person having ordinary skill
in the art would have appreciated that the prior art compositions containing a relatively high
proportion of core-shell polymer also possess a relatively high degree of flexibility of low
flexural modulus.
Where, as here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO's inability to manufacture products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34, (CCPA 1977). This appellant
has not done. We have carefully reviewed the evidence of record, including the Gallucci
Declaration executed December 12, 1991. Appellant has not established, however, that
the Fromuth thermoplastic polyesters containing a relatively high proportion of core-shell
polymer (about 67 to 74 percent by weight) do not have a flexural modulus having the
upper limit recited in claims 26 through 29. Appellant has not established that the closest
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