Appeal No. 94-4173
Application 07/868,492
Rejection under 35 U.S.C. § 102(b)
According to the examiner, “Wilson (‘355) discloses the
structural limitations of the instant claims. Namely dichlorvos
and chlorpyrifos (column 3, lines 57-68) mixture.” Final
rejection (Paper No. 6), p. 4. We recognize that when the
claimed and prior art products appear to be “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434
(CCPA 1977). Here, however, we do not find that the composition
disclosed by Wilson is made by the same or substantially the same
method as the claimed composition; nor does the examiner contend
that they are. Rather, what we find on this record is an
assertion by the examiner that the composition in representative
claim 15 has the same basic components as the composition
described by Wilson. Final rejection, p. 4. However, the
examiner has not provided any explanation as to the basis for his
finding. Without an explanation or reasons, it is improper for
the to shift the burden to the appellants to establish that the
“product produced by microwave radiation produces a structurally
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