Appeal No. 2004-2294
Application 10/002,343
shifts to appellants to establish that the claimed material patentably distinguishes over the
applied prior art, regardless of the statutory provision under which the rejection is made. See
generally, In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990) (“The
Board held that the compositions claimed by Spada ‘appear to be identical’ to those described by
Smith. While Spada criticizes the usage of the word ‘appear’, we think that it was reasonable for
the PTO to infer that the polymerization by both Smith and Spada of identical monomers,
employing the same or similar polymerization techniques, would produce polymers having the
identical composition.”). In re Best, 562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34 1254-55,
195 USPQ 430, 432-33 (CCPA 1977)( “Where, as here, 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. See In re Ludtke,
[441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. 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 PTO’s inability to manufacture
products or to obtain and compare prior art products. [Footnote and citation omitted.]”); In re
Skoner, 517 F.2d 947, 950-51, 186 USPQ 80, 82-83 (CCPA 1975) (“Appellants have chosen
to describe their invention in terms of certain physical characteristics . . . . Merely choosing to
describe their invention in this manner does not render patentable their method which is clearly
obvious in view of [the reference]. [Citation omitted.]”).
Here, we find no evidence in the record, and none is relied on in the brief, establishing
that the claimed catalysts containing the specified ceramic carriers patentably distinguishes over
the applied prior art including the ceramic carriers disclosed by each of Mitsui and Nishino.
Thus, on this record, the specified properties of the claimed ceramic substrates appear to be the
mere discovery of a new property of the ceramic substrates of Mitsui and Nishino which, without
more, is not dispositive of the nonobviousness of the claimed catalysts over the applied
combinations of references. See, e.g., Spada, 911 F.2d at 708, 15 USPQ2d at 1657; Titanium
Metals Corp. v. Banner, 778 F.2d 775, 782-83, 227 USPQ 773, 779 (Fed. Cir. 1985).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Miyoshi and Mitsui
- 7 -
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007