Appeal No. 1997-1604
Application No. 08/273,688
second oil to produce a finished composition (e.g., again see
lines 55-57 in column 8). Moreover, patentee’s finished
composition would contain concentrations of water and polymer
solids which are within the corresponding ranges defined by
the appellants’ composition claims (e.g., see the paragraph
bridging columns 5 and 6 and lines 13-59 in column 6 of the
patent). The correspondence between Scanley’s finished
composition and the here claimed composition (e.g., with
respect to ingredients and concentrations) evinces that
Scanley’s composition also possesses the pourablity and
viscosity characteristics of the here claimed composition . 2
Under these circumstances, it is fair to require that the
appellants prove Scanley’s composition does not actually
possess the aforementioned characteristics. The fairness of
so allocating the burden of proof lies in the inability of the
Patent and Trademark Office to manufacture and compare the
compositions under consideration. In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-434 (CCPA 1977).
2That patentee’s composition possesses such
characteristics as pourablity is also evinced by the
disclosure of applying fluid handling techniques to these
compositions at lines 46-49 in column 6.
7
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