Appeal No. 2001-0218 6
Application No. 09/184,993
Furthermore, on the record before us, we find no teaching or suggestion that the
polycarbonate sheet of the references of record is a product which appears to be identical
or substantially identical as that of the claimed subject matter so as to fall within the
doctrine established by In re Best. As is well settled, when 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. In re Fitzgerald, 619 F.2d 67,
70, 205 USPQ 594, 597 (CCPA 1980); In re Best, 562 F.2d 1252, 1254-55, 195
USPQ 430, 433-34 (CCPA 1977). Furthermore, the discovery of a new property even
when that property is unobvious from the prior art, cannot impart patentability to claims
directed to a known composition. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1658 (Fed. Cir. 1990).
The thrust of the invention however, is to enhance the fire resistant properties of a
polycarbonate sheet by significantly reducing the viscosity of the polycarbonate resin in the
sheet. See specification, page 3, lines 3-7. In the record before us, it has not been
asserted by the examiner with any evidentiary basis, that the polycarbonate sheet of the
references of record is a product which appears to be identical or substantially identical as
that of the claimed subject matter. Based on the evidence before us, we decline to so
assert.
Accordingly, the rejection of record cannot be sustained.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007