Appeal No. 1998-0123
Application No. 08/251,575
nitrogen gradient, the examiner reasons that the rolling
bearings of the references are sufficiently substantially
similar to the claimed rolling bearing to shift to appellants
the burden of establishing that the claimed product is
patentably distinct from the rolling bearings of the cited
references. As further support for the examiner's position,
the examiner states that "[i]t is known in the art that the
hardness due to carbonitriding is related to the diffused N
concentration" (page 6 of Answer). Hence, since Furumura
discloses that there is little if any difference in hardness
between the surface portion and core portion of the bearing,
it follows that there is little if any nitrogen gradient
throughout the surface portion.
It is well settled that when a claimed product reasonably
appears to be substantially the same as a product disclosed by
the prior art, the burden is on the applicant to prove that
the prior art product does not necessarily or inherently
possess characteristics attributed to the claimed product. In
re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433
(CCPA 1977). However, it is also fundamental that the
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