Appeal No. 1996-2413
Application No. 08/120,194
homogenizing step and the Japanese freeze-drying to the
appellant’s claimed freeze-drying step).
Under these circumstances, it is appropriate to require
the appellant to prove that the freeze dried powder obtained
from an aloe leaf in accordance with Japanese ‘526 does not
necessarily or inherently possess the characteristics of the
here 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
inability of the Patent and Trademark Office to manufacture
products or to obtain and compare prior art products. In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977).
On this record, the appellant has not carried his above
mentioned burden. Although a section 1.132 declaration was
filed October 30, 1992 in the appellant’s parent application
(i.e., 07/713,052) as pointed out in the brief, this
declaration compares products in accordance with the
appellant’s invention and products in accordance with the
invention disclosed in the McAnalley (not Japanese ‘526)
reference. It follows that the reference evidence adduced by
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