Appeal No. 1997-2122
Application 08/310,902
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 [footnote omitted].
TIME PERIOD FOR RESPONSE
This opinion contains a new ground of rejection pursuant to 37 CFR §
1.196(b) (2000). 37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial review.” 37 CFR § 1.196(b)
also provides that the appellants, WITHIN TWO MONTHS FROM THE DATE OF
THE DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims so
rejected or a showing of facts relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which
event the application will be remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b)
by the Board of Patent Appeals and Interferences upon the same
record. . . .
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