Appeal No. 2001-0964
Application No. 09/069,442
In particular, we fully agree with the examiner’s basic
position that the pale yellow color range for the here claimed
electrodeposit, which is based on the NIHS 03-50 scale, is
indistinguishable from the yellow to white color range disclosed
by patentee (e.g., see lines 42-45 in column 3), which is not
described in terms of the aforementioned NIHS 03-50 scale. Under
these circumstances, it is appropriate to require the appellant
to prove that Korbelak’s electrodeposit does not actually possess
the same color characteristic as the here claimed electrodeposit,
and the fairness of so allocating this burden of proof is evinced
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, 1254-55, 195 USPQ 430, 433-34 (CCPA
1977). On the record before us, the appellant has proffered no
such proof.
Similarly, we share the examiner’s conclusion that it would
have been obvious for an artisan with ordinary skill to develop
workable or even optimum ranges for the here claimed parameters,
such as ingredient concentration, since these parameters are
evinced by Korbelak to be known in the prior art as result-
effective variables. In re Woodruff, 919 F.2d 1575, 1578,
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