Appeal No. 1997-1536
Application 08/342,817
created grounds of obviousness double patenting.
Claims 10 and 11 are rejected under 35 U.S.C. § 102 as
anticipated by or, in the alternative, under 35 U.S.C. 103 as
being obvious over Marten. Whether rejected under 35 U.S.C.
§ 102, as "anticipated" or under 35 U.S.C. § 103 as "obvious",
the rationale is the same and one of the predecessors to our
reviewing court has sanctioned the practice of rejecting the
claims alternatively under both 35 U.S.C. §§ 102 and 103
where, as here, the Patent and Trademark Office (PTO) does not
have the ability to prepare and compare the prior art with
what is claimed.
As the court held in In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433, 434 (CCPA 1977):
"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." [footnotes and citations omitted]
In response to the examiner's observation that the high
15
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