Appeal No. 1998-0419
Application No. 08/526,534
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 USC
102, on "prima facie obviousness" under 35 USC 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. [Citations and footnotes
omitted.]
Applying these principles, we share the examiner's view
that there is substantial evidence to support a prima facie case
of anticipation, which has not been adequately rebutted by the
appellants. As we noted above, Song teaches chewing gum
products made directly from the chewing gum base exiting the
continuous mixer. Further, Song teaches that chewing gum
typically contains a water-soluble bulk portion and water-
insoluble flavoring agents in addition to the gum base. (Column
5, lines 9-15.) These chewing gum ingredients described in Song
are identical or substantially identical to the chewing gum
ingredients described in the present specification. (Page 15,
lines 31-34.) Although Song's teaching is directed to chewing
gum made by a process using more than one mixer, the end product
would appear to be the same as that recited in appealed claim 5
because the same ingredients are used.
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