Appeal No. 95-4089
Application 08/090,073
42), from 4% to 25% by weight of the total
composition of maleic acid (col. 2, lines 32-33),
said composition having a pH of from 1.0 to 4.0.
Bechstedt does not explicitly describe a pH for his
compositions. However, as noted in our Finding 34, there is a
plausible basis for finding that the pH of the Bechstedt
compositions is probably in the range of 1 to 4. Under the
circumstances, including the fact that the Patent and
Trademark Office has no laboratory in which to make
compositions and test their pH, the burden is reasonably
shifted to applicant to show that the compositions of
Bechstedt do not have a pH in the range of 1 to 4. Compare In
re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)
(where 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).
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