Appeal No. 1998-2257
Application 08/692,310
The appellants’ claim 32 is a product-by-process claim.
Whether a rejection of such a claim is under 35 U.S.C. § 102
or § 103, when the appellants’ product and that of the prior
art appear to be identical or substantially identical, the
burden shifts to the appellants to provide evidence that the
prior art product does not necessarily or inherently possess
the relied-upon characteristics of the 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, 433-34 (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, 562 F.2d at 1255, 195 USPQ at 434; In re
Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). The
examiner, however, has provided no evidence or technical
reasoning which shows that the appellants’ alloys and any of
the prior art alloys appear to be identical or substantially
identical. The examiner apparently assumes that alloys
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