Appeal No. 95-2022
Application No. 08/063,056
its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products. [Footnote and citations omitted.]
On these facts, we believe that the burden of persuasion shifted
to appellants "to prove that the prior art products do not
necessarily or inherently possess the characteristics of [their]
claimed product." This appellants have not done. In the absence
of a showing, it appears that the evaporated black liquor
described by Forss, EXAMPLE 10, like the product defined in
claims 31 and 32, comprises molecules which pass through an
ultrafiltration membrane having a molecular weight cut-off of
about 50,000 and are rejected by an ultrafiltration membrane
having a molecular weight cut-off of about 2,000.
For these reasons, we find that (1) the examiner established
a prima facie case of anticipation of claims 31 and 32 based on
the description in Forss, EXAMPLE 10; and (2) appellants have not
rebutted the prima facie case. We therefore affirm the rejection
of independent claims 31 and 32 under 35 U.S.C. § 102(b) as
anticipated by Forss. In so doing, we are mindful that
appellants rely on data presented in their specification and in
the McVay declaration, executed July 12, 1993, designed to show
that their claimed product possesses unexpectedly superior
results. See the Appeal Brief, section VI.C. We point out,
however, that a proper rejection under 35 U.S.C. § 102 cannot be
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