Appeal 2007-1855
Application 10/815,650
In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977);4
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 of the roughened substrate surface. . . . 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)).
We are of the opinion Appellants have not carried their burden. We
disagree with Appellants that the use of information with respect to the
claimed toner compositions in the written description in the Specification in
comparing the claimed toner compositions as a whole with the toner
compositions of Machida to determine compliance with §§ 102(b) and
“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.
Spada, 911 F.2d at 708, 15 USPQ2d at 1657-58.
4 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 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. [Footnote and citation omitted.]
Best, 562 F.2d at 1255, 195 USPQ at 433-34.
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