Appeal No. 2003-1561 Page 12
Application No. 09/632,840
that the applied prior art gums do not in fact possess the
characteristics relied on. See In re Spada, 911 F.2d 705, 708,
15 USPQ 1655, 1658 (Fed. Cir. 1990); 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 (CCPA 1977). 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.
Here, appellants have not satisfied this burden.
It follows that, on this record, we shall sustain the
examiner’s § 102 rejections.
Rejections under 35 U.S.C. § 103(a)
All of the claims subjected to this rejection require the
step of administering a chewing gum to an animal. The difficulty
we have with the examiner’s position stems from the examiner’s
reliance on a passage at page 1, lines 18-20 of appellants’
specification as prior art evidence of the obviousness of that
administering step.
The examiner has not only failed to list that portion of
appellants’ specification as alleged prior art being relied upon
in the statement of the rejection4, but has also failed to
4 See In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407
n.3 (CCPA 1970).
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