Appeal No. 1997-2671
Application No. 08/446,473
such a mole ratio within the here claimed range for the
reasons discussed above.
In essence, the compositions disclosed by Lokkesmoe for
use in his method appear to be identical to compositions
encompassed by the here claimed method, and thus it is
appropriate to require the appellants to prove that patentee’s
compositions do not necessarily or inherently possess the
characteristics of their claimed composition including the
appealed claim 1 mole ratio of acetic acid to peroxyacetic
acid at equilibrium. 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
inability of the Patent and Trademark Office to manufacture
products or to obtain and compare prior art products. In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977).
In addition to the foregoing, we agree with the
examiner’s conclusion that it would have been obvious for an
artisan with ordinary skill to determine workable or even
optimum ranges for the mole ratio parameters discussed above.
This is because such parameters are quite plainly result
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