Appeal No. 95-5133
Application 08/135,523
for guidance in determining the finite amounts which correspond to the functional language. See In re
Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Herz, 537, f.2d
549, 190 USPQ 461 (CCPA 1976). On the
record before us, we find that the examiner has established a prima facie case of unpatentability of the
claimed composition over the disclosed composition of the reference.
Where the claimed and prior art products are identical or substantially identical in structure or
composition, or are produced by identical or substantially identical processes, a prima facie case of
either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1254, 195 USPQ
430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of showing that they are not." In
re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In rebuttal, appellant urges that Merck does not anticipate the composition of claim 14 and
points to the lack of a disclosed utility which would suggest a pharmaceutical composition as claimed.
However, a disclosure which disclosed products and a method of making the product but lacks a
teaching of how to use the product for a specific, substantial utility is entirely adequate to anticipate a
claim to the product. In re Schoenwald, 964 F.2d 1122, 1123, 22 USPQ2d 1671, 1673 (Fed. Cir.
1992), In re Hafner, 410 F.2d 1403, 1405, 161 USPQ 783, 785 (CCPA 1969). A new use for an
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