Appeal No. 1996-1158
Application No. 08/077,599
Given the above findings of fact, it is reasonable to
shift the burden to appellant to prove that the amount of fuel
utilized per pound of carbon black produced by Cheng’s process
steps corresponding to the claimed steps (a), (b), and (c) is
not necessarily less than the fuel utilized per pound of
carbon black produced by Cheng’s process steps corresponding
to the claimed steps (a) and (b). See In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). The fairness of
shifting of the burden is further evidenced by the U.S. Patent
and Trademark Office’s inability to carry out Cheng’s process
and compare its resulting fuel/carbon black ratios at
different carbon black forming zones. Id.
Appellant argues that Cheng does not save fuel as
required by the claimed step (d). See Brief, pages 8 and 9.
In support of his position, appellant states that Cheng
employs in its example conventional amounts of fuel in “both
carbon black forming zones” (emphasis ours). See Brief, page
9. The amounts of fuel employed, however, do not necessarily
determine the resulting fuel/carbon black ratios (which are
said to reflect fuel savings) at both carbon black forming
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