Appeal No. 1999-0764
Application 08/745,199
While Spada criticizes the usage of the word ‘appear’, we think that it was reasonable for the
PTO to infer that the polymerization by both Smith and Spada of identical monomers, employing
the same or similar polymerization techniques, would produce polymers having the identical
composition.”); In re Best, 562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977)
(“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. See In re Ludtke, [441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. Whether the
rejection is based on “inherency” under 35 USC § 102, on “prima facie obviousness” under 35
USC § 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.
[Footnote and citation omitted.]”); Wertheim, 541 F.2d at 271, 191 USPQ at 103-04; In re
Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 325-26 (CCPA 1974); citing In re Brown, 459
F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) (“In Brown, the court was in effect saying that
the [PTO] bears a lesser burden of proof in making out a case of prima facie obviousness for
product-by-process claims because of their peculiar nature than would be the case when a
product is claimed in the more conventional fashion.”).
We have considered the evidence in the Bayer declaration in this respect and find that, on
this record, the “samples that correspond to Krutenat” reasonably appear to possess “Surface
Al-Si” characteristics indicating that the coated metal products would fall into at least appealed
claim 11. While declarant Bayer states that thickness of the coating is a consideration
(declaration, e.g., page 5), we do not find any limitation in at least appealed claim 11 which is
directed to this product property. Thus, the evidence of record does not, on this record,
reasonably appear to patentably distinguish the claimed products encompassed by at least
appealed claim 11 from the products produced by the method of Krutenat.
700-52).
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