Appeal No. 1996-1942 7
Application No. 07/977,834
conclude that each of the above claims necessarily requires that the microcapsules contain
a polymer within the microcapsules. Furthermore as to claim 21, which states that a free
radical initiator is present and the polymerization occurs by heating, it is likewise sufficient
to meet the requirements of the claimed subject matter that an encapsulated polymer is
present. Stated otherwise, the claimed subject matter is directed to the resulting
polymer, and there is no reason to believe that the polymer would have different
physical characteristics depending on where or when the polymerization occurred.
The only apparent distinction between the adhesive composition of the claimed
subject matter is found in the functional limitation present in both claims 15 and 21,
wherein the adhesive present is, “initially non-tacky but exhibits tacky properties upon
application of external forces.” It is well settled however, that when appellant’s product
and that of the prior art appears to be identical or substantially identical, the burden shifts
to appellant to provide evidence that the prior art product does not necessarily or
inherently possess the relied-upon characteristics of appellant’s claimed product. In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Furthermore, the discovery of a
new property even when that property is unobvious from the prior art, cannot impart
patentability to claims directed to a known composition. In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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