Appeal No. 1997-2837 Page 7
Application No. 08/377,365
227 USPQ 964, 966 (Fed. Cir. 1985) ("If the product in a product-
by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior art
product was made by a different process."). Whether a rejection
is under 35 U.S.C. § 102 or § 103, where, as here, appellants'
product and that of the prior art appear to be identical or
substantially identical, the burden shifts to appellants to
provide evidence that the prior art product does not necessarily
or inherently possess the relied upon characteristics of
appellants' claimed product. See In re Fitzgerald, 619 F.2d 67,
70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-434 (CCPA 1977); In re Fessmann, 489 F.2d
742, 745, 180 USPQ 324, 326 (CCPA 1974). The reason is that the
Patent and Trademark Office is not able to manufacture and
compare products. See Best, supra; In re Brown, 459 F.2d 531,
535, 173 USPQ 685, 688 (CCPA 1972). Appellants have not met this
burden.
Nor have appellants furnished any separate convincing
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