Appeal No. 95-3557
Application No. 07/833,417
Where, as here, 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. ... 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.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 through 18 under 35 U.S.C. §
103 is reversed. However, claims 11 through 18 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Huster.
This decision contains a new ground of rejection pursuant to 37 C.F.R. § 1.196(b) (amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53, 131, 53, 197 (Oct. 10, 1997), 1203 off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that, “A new
ground of rejection shall not be considered final for purposes of judicial review.”
37 C.F.R. § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the two following options with respect to the
new ground of rejection to avoid termination of proceeedings (§ 1.197(c)) as to the rejectged claims:
(1) Submit an appropriate amendment of the claims so rejected or a showing
of facts relating to the claims so rejected, or both, and have the matter reconsidered by
the examiner, in which event the application will be remanded to the examiner ....
(2) Request that the application be reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the same record ...
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