Appeal No. 2001-0344
Application 08/900,254
taken” comes nowhere from the prior art” (Appeal Brief, page 5, lines 11-13); however,
Appellant has undertaken no efforts to distinguish the Yamamoto or Norton processes.
The Examiner having made the prima facie case of obviousness, the burden then
shifted to the Applicant to show that these elements were not present in the prior art.
See, e.g. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977)
Where . . . 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.
We return to Yamamoto, column 8, lines 37-43, to delve into the disclosure more
fully. The Examiner has pointed to the Yamamoto sheets in Examples 13 and 14
(which appear to have comparable properties to the rest of the Yamamoto sheets). We
note that these sheets were calendered at a working width of 50 cm under a pressure of
10 tons at a temperature of 180°C and 130°C.
Yamamoto discloses it is known to use various types of synthetic fibers in non-
woven sheets, including polypropylene, acrylic, and polyvinyl alcohol fibers (col. 1, lines
20-23). Drawn polyester was specifically used as a staple fiber in Examples 13 and 14.
In these examples, 4 kg of cut, the drawn polyester fibers are combined with 1 kg of
apparently untreated water insoluble polyvinyl alcohol fiber binder, “each fiber having a
denier of 1, a length of 3mm, and softening point of 70°C in water” (column 8, lines 24-
28) and a slurry created. The slurry is mixed with 1% polyacrylamide and subjected to a
paper making process before being calendered.
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