Appeal No. 1997-3487 Page 6
Application No. 08/473,420
The Rejection under 35 U.S.C. § 103
The examiner rejects claims 7-12 as unpatentable over McNeely in view of Bult.
The rejection is based in part on the finding that Bult “teaches the carbon concentrations within the
claimed range, by using the same process as shown in the specification.” (Answer, page 4). The
examiner concludes that because the prior art grows the crystal in the same way as the appellant, it
follows that the composition inherently has the same impurity level as claimed. (Id.). The examiner
bears the initial burden of presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). It is true that where the claimed and
prior art products are identical or substantially identical, or are produced by identical or substantially
identical processes, the burden has sometimes been found to have been met such that the burden was
shifted to the applicant to prove that the prior art product did not, in fact, inherently possess the
characteristics of the claimed product. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-
34 (CCPA 1977). However, before the applicant can be put to the burdensome task of proving his or
her product is different, the examiner must provide a sufficient level of evidence or scientific reasoning
which establishes the reasonableness of the examiner’s belief that the functional limitation is an inherent
characteristic of the prior art product.
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