Appeal No. 96-2425
Application 08/094,933
unpatentable even though the prior art product was made by a
different process.”). Whether a rejection is under 35 U.S.C.
§ 102 or § 103, when appellants’ product and that of the prior
art appear to be identical or substantially identical, the
burden shifts to appellants to provide evidence that the prior
art product does not necessarily or inherently possess the
relied-upon characteristics of appellants’ claimed product.
See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324,
326 (CCPA 1974). The reason is that the Patent and Trademark
Office is not able to manufacture and compare products. See
Best, 562 F.2d at 1255, 195 USPQ at 434; In re Brown, 459 F.2d
531, 535, 173 USPQ 685, 688 (CCPA 1972).
Because, as acknowledged by appellants, Bolton’s
disclosed and claimed (claim 9) product is substantially the
same as that of appellants, and because appellants have not
carried their burden of providing evidence which establishes
that their claimed product is patentable over that of Bolton,
we affirm the obviousness-type double patenting rejection of
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