Appeal No. 1997-1793
Application No. 08/528,044
is unpatentable even though the prior product was made by a
different process.”).
In In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977), the predecessor of our reviewing court explained
as follows:
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. [Citations and footnotes omitted.]
The examiner should consider the teachings of Hattori
with these legal principles in mind. As we discussed above,
Hattori discloses various precipitated binary oxides of Fe O -
2 3
TiO containing 10-90% Fe O and having surface areas of 21-622 2 3
m /g (experimental section, Table 1, page 3208). Although it2
is not entirely clear whether Hattori is referring to mole
percents or weight percents in Table 1, it would appear that
the product identified as “Fe O -TiO (1/9)” meets the iron
2 3 2
oxide content as
12
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