Appeal No. 2000-0487 Page 4
Application No. 08/913,380
prior art, the claim is unpatentable even though the prior art
product was made by a different process.”). Whether a rejection
is under 35 U.S.C. § 102 or § 103, when appellants* product and
that of the prior art appears to be identical or substantially
identical, the burden shifts to appellants to provide evidence
that the prior art product does not necessarily or inherently
possess the relied upon characteristics of appellants* 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,
433-434 (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).
Like appellants’ product polyurethanes, the examiner has
found that Georgoudis (page 2, lines 19-25) describes water
soluble polyurethanes made as reaction products of organic
isocyanates with polyalkylene glycols and other polyols, such as
polyethylene ether glycol (a polyalkylene glycol)1 and
1 See the definition of polyethylene glycol at page 706 of
Hawley, The Condensed Chemical Dictionary, (1975). Thus, the
polyethylene glycol employed in composition B of Example 3 of
Georgoudis comprises essentially 100 weight percent ethylene
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007