Appeal No. 95-0808
Application 08/048,866
example, the temperature is much higher. Thus, it reasonably
appears that if a reaction product is formed between the
tetraethylorthosilicate and cerium oxide in appellants’
example, a reaction product of
these components also is formed in Basil’s Example III. See
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657-58 (Fed.
Cir. 1990). In such a situation, the burden shifts to
appellant to provide evidence that the product in Basil’s
Example III does not necessarily or inherently include the
reaction product recited in appellants’ claim 1. See In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In
re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324, 326
(CCPA 1974). The reason is that the Patent and Trademark
Office is not able to manufacture and compare products. See
Best, 562 F.2d at 1255, 195 USPQ at 434; In re Brown, 459 F.2d
531, 535, 173 USPQ 685, 688 (CCPA 1972). Because appellants
have not carried this burden, we affirm the rejection under 35
U.S.C. § 102(e) over Basil.
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