Appeal No. 1999-1810
Application 08/288,433
the oxidation of the iodine and the ammonium are destroyed or
consumed. A brine solution prepared by the process of claim
19 including oxidation of the ammonium and removal of the
oxidation products reasonably appears to be the same or
substantially the same as Bissot’s purified, saturated brine
containing no detectable iodide. In such a case, whether the
rejection is under 35 U.S.C. § 102 or § 103, the burden shifts
to the appellant to provide evidence that the prior art
product does not necessarily or inherently possess the relied-
upon characteristics of the appellant’s claimed product. See
In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324,
326 (CCPA 1974). The reason is that the Patent and Trademark
Office is not able to manufacture and compare products. See
Best, 562 F.2d at 1255, 195 USPQ at 434; In re Brown, 459 F.2d
531, 535, 173 USPQ 685, 688 (CCPA 1972). Because the burden
of providing such evidence has shifted to the appellant and
the appellant has not carried this burden, we affirm the
rejection of claim 16 under 35 U.S.C. § 102(b) over Bissot.
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