Appeal No. 1998-1866
Application 08/406,883
In considering the examiner’s position, we believe the statement of the rejection
resulted from a misapplication of the principles enunciated in In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 43 (CCPA 1977) (footnote omitted), where the court stated:
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.
Normally, when an examiner compares the subject matter of a claim pending in an
application with an individual prior art reference, the examiner will determine whether a
difference exists between the two. If no difference exists, the reference would be
considered an anticipation under 35 U.S.C. § 102. If a difference exists, the reference
becomes at best evidence under 35 U.S.C. § 103. However, In re Best is directed to a
particular set of circumstances where examiners in the USPTO cannot readily
determine whether a difference exists between the subject matter of a given claim and a
particular prior art document. Typically these circumstances arise in the context of a
claim directed to a compound or composition where the claim describes a property or a
function of the compound or composition which the prior art reference does not address.
These circumstances can also arise where, as here, the claim is directed to a microbe.
As explained in Best, if the claimed and prior art products are identical or substantially
identical, the USPTO can require an applicant to prove that the prior art product does
not necessarily or inherently possess the characteristics of the claimed product. In
order to invoke the principles of In re Best, the examiner must first make factual findings
which support the conclusion that the claimed and prior art products prima facie are
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