Appeal No. 1995-3416
Application No. 08/127,707
(see specification at page 3, last sentence of first
paragraph).
Appealed claims 26-29 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kurakami.2
Upon careful consideration of the opposing arguments
presented on appeal, we find that the examiner has properly
rejected appealed claims 26 and 27 under 35 U.S.C. § 102(b)
over Kurakami. However, we cannot sustain the examiner's
rejection of claims 28 and 29.
It is well settled that when a claimed process reasonably
appears to be substantially the same as a process disclosed by
the prior art, the burden is on the applicant to prove with
objective evidence that the prior art process does not
necessarily or inherently possess characteristics attributed
to the claimed process. In such situations it matters not
whether the rejection is based on § 102 or § 103. In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.
1990); In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
2The examiner's final rejection of claims 26-29 under
35 U.S.C. § 112, second paragraph, has been withdrawn by the
examiner. See page 2 of the Answer.
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