Appeal No. 2003-1241 Page 5
Application No. 09/808,433
necessarily or inherently possess the characteristics of his claimed product. Whether
the rejection is based on “inherency” under 35 USC § 102, on “prima facie obviousness”
under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the inability of the Patent and Trademark Office to
manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d
1252, 1254, 195 USPQ 430, 433-34 (CCPA 1977).
It is the appellants’ basic position that the Schertl declaration shows the here
claimed composition possesses higher activity than Olive’s composition. Concerning
this declaration, the examiner points out that the appellants’ tested composition does
not exhibit significantly higher activity after a reaction time of thirty minutes and that
Olive’s tested composition actually exhibits a higher activity at 140°C after a reaction
time of 180 minutes. In response, the appellants state that, “[a]fter the first thirty
minute, the competition reaction has started, so that the results of the activities cannot
be compared after this time” (Brief, page 4).
We regard this declaration evidence as insufficient to carry the appellants’
burden of showing that their claimed composition differs from the composition ultimately
formed during use of the Olive catalyst. While these compositions may differ initially,
for example, during the first thirty minutes of reaction time, this is not surprising since
Olive’s catalyst complex would not be expected to immediately disassociate into the
iron and ligand constituents which effect the mechanism of the isomerization reaction in
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