Appeal No. 96-1076
Application No. 07/961,160
claimed Shore D hardness or Vicat softening point values.
While the examiner acknowledges this point, she notes that
“the polyetheresters taught at the bottom of page 13 through
page 14 [of the Penneck reference] encompass the
polyetheresters specified in the claims” (Answer, page 4), and
the appellants do not contend otherwise. Since Penneck’s
polyether-esters include those claimed by the appellants, it
is reasonable to believe that these polyether-esters possess
the here claimed Shore D hardness and Vicat softening point
values and concomitantly reasonable to require that the
appellants prove the contrary. 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. In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-434 (CCPA 1977). On this record, the
appellants have not carried their burden of showing that
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