Appeal No. 96-3803
Application No. 08/128,245
appellants in the present specification, viz, commercially
available AEROSOL and CAB-O-SIL, the examiner reasons that the
toner composition comprising the inorganic microparticles
disclosed by each of the references "is identical to the
instant claimed toner" (page 4 of answer). According to the
examiner, "[i]t is inherent that when the two compositions are
identical they have the same properties" (page 4 of answer).
It is, of course, well-settled law that when a claimed
product reasonably appears to be substantially the same as a
product disclosed by the prior art, the burden is on the
applicant to prove that the prior art product does not
necessarily or inherently possess characteristics attributed
to the claimed product. In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433 (CCPA 1977). However, before the burden of
proving a patentable distinction is placed on the applicant,
the examiner has the initial burden of demonstrating a
substantial correspondence between the prior art product and
the claimed product such that one of ordinary skill in the art
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