Appeal No. 1998-1217
Application No. 08/405,599
heating step of mere seconds in duration which would cause
little if any discernable difference in the ultimate product
resulting from this process.
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by
identical or substantially identical processes, the Patent and
Trademark Office 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 inability of the Patent and Trademark Office to
manufacture products or to obtain and compare prior art
products. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-
434 (CCPA 1977).
In summary, the product defined by appealed claim 21 is
indistinguishable from the product of Dick on the record before
us. In particular, the Appellants have not carried their burden
of showing that Dick's products do not necessarily or inherently
possess the tensile/compressive strength characteristics of
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