Appeal No. 95-2022
Application No. 08/063,056
appears to be identical or substantially identical to the
evaporated black liquor described by Forss in column 12, EXAMPLE
10. This follows for two reasons. First, the aqueous lignin
solution recited in claims 31 and 32 "reads on" black liquor,
whereas the source material in EXAMPLE 10 is "[b]lack liquor from
a kraft cook on pine wood." Second, 67.1% (w/w) of the alkali
lignins in the black liquor of EXAMPLE 10 had molecular weights
not exceeding the molecular weight of Glucagon, and 74.7% (w/w)
had molecular weights not exceeding 5,000 as determined by gel
chromatography. Those weight percentages meet the criteria set
forth in appellants' claims, namely, "more than 60 wt[.] percent
of the molecules of said lignin fraction have a molecular weight
which does not exceed the molecular weight of Glucagon and more
than 65 wt[.] percent of the molecules of said lignin fraction
have a molecular weight which does not exceed 5,000, as
determined by gel chromatography."
As stated in In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (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. 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
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