Ex parte MATVIYA et al. - Page 15




          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                
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