Appeal No. 2001-0936
Application No. 08/952,208
above. We reiterate that the examiner has established, by
sufficient technical reasoning, that some THA-I is necessarily
present in the 6-ACN of Ritz. Indeed, we additionally find that
the process of Ritz (liquid phase, 140°C to 320°C, 1-120 minutes)
fall within the temperatures and times required to manufacture
the THA-I from 6-ACN recited in the instant specification.
(Ritz, col. 3, lines 1-15; specification, page 4, lines 11-27).
Finally, the instant specification admits that THA-I is formed
from simply storing 6-ACN. (Specification, page 1, lines 8-10).
As stated in In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-4 (CCPA 1977):
Where . . . 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.
Thus, we agree the examiner has established that the subject
matter of claim 13 reasonably appears to be identical or
substantially identical to the prior art, and consequently a
prima facie case of obviousness.
Turning to the declaration evidence, it only illustrates
that <10 ppm (<0.001) is present in the 6-ACN at day zero and it
14
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