Appeal No. 1997-1793
Application No. 08/528,044
reasonable to conclude that the prior art product is
indistinguishable from the appellants’ claimed product and
that it is appropriate to shift the burden of proof to the
appellants to show a patentable
difference. Best, 562 F.2d at 1255, 195 USPQ at 433-34; In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.
1990)(reaffirming the principle that similarities in terms of
reactants, reaction conditions, and properties amount to a
prima facie case of unpatentability). The fairness in the
shifting of the burden of proof here would be evidenced by the
PTO’s inability to conduct laboratory experiments. Best, 562
F.2d at 1255, 195 USPQ at 433-34.
As to claim 9, which further recites the UV absorption
property of the claimed product, it is reasonable to believe
that such a property would be inherent in the products
described in Hattori, because the claimed product and the
prior art product are indistinguishable. Spada, 911 F.2d at
709, 15 USPQ2d at 1658 (“When the claimed compositions are not
novel they are not rendered patentable by recitation of
properties, whether or not these properties are shown or
suggested in the prior art.”).
We note that two declarations (Paper No. 9 and Paper No.
18) have been filed during the prosecution in an attempt to
15
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007