Ex parte AGARWAL - Page 5




              Appeal No. 1995-2036                                                                                         
              Application 07/920,009                                                                                       



              polyesters containing a relatively high proportion of core-shell polymer (about 67 to 74                     
              percent by weight), we find that the claimed and prior art thermoplastic compositions                        
              reasonably appear to be identical or substantially identical.  A person having ordinary skill                
              in the art would have appreciated that the prior art compositions containing a relatively high               
              proportion of core-shell polymer also possess a relatively high degree of flexibility of low                 
              flexural modulus.                                                                                            
                     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.                  
              In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34, (CCPA 1977).  This appellant                          
              has not done.  We have carefully reviewed the evidence of record, including the Gallucci                     
              Declaration executed December 12, 1991.  Appellant has not established, however, that                        
              the Fromuth thermoplastic polyesters containing a relatively high proportion of core-shell                   
              polymer (about 67 to 74 percent by weight) do not have a flexural modulus having the                         
              upper limit recited in claims 26 through 29.  Appellant has not established that the closest                 

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