Appeal No. 1996-1178
Application No. 08/160,324
("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. See In re Brown, 59, CCPA 1036, 459
F.2d 531, 173 USPQ 685 (1972).
However, on this record, we find no evidence proffered by
appellants, which demonstrates that the carbon blacks employed
in example 23 of Negata do not possess the additional or new
properties attributed to the claimed carbon blacks.
Appellants argue that Negata does not teach, nor would
have suggested, delta Tints greater -3. However, as indicated
by the examiner at page 4 of the Answer, such delta Tints are
not claimed. When the claims do not recite allegedly
distinguishable features, "appellant[s] cannot rely on them to
establish patentability." In re Self, 671 F.2d 1344, 1350-
1351, 213 USPQ 1, 7 (CCPA 1982).
In view of the foregoing, we agree with the examiner that
the disclosure of Negata would have rendered the claimed
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