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 15Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 NextLast modified: November 3, 2007