Appeal No. 1998-2129 Page 10
Application No. 08/561,816
is unpatentable even though the prior art product was made by
a different process."). Where, as here, appellant’s
product and that of claims 1, 10 and 21 of Lassiter (R.E.
35,603) appear to be substantially identical, the burden
shifts to appellant to provide evidence that the applied
product of claims 1, 10 and 21 of Lassiter (R.E. 35,603) does
not necessarily or inherently possess the relied upon
characteristics of appellant’s 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
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA
1977); In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA
1972). Appellant discusses method differences but has not
persuasively argued in the brief, let alone established with
objective evidence, how the products of the appealed claims 1-
7 are patentably distinguished over the product of claims 1,
10 and 21 of Lassiter (R.E. 35,603) alone or the product of
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