Appeal No. 1999-2488
Application No. 08/841,027
contain each of the ingredients defined by independent claim 9 in
concentrations which encompass or overlap the claim
9 concentrations. Therefore, the composition products defined by
appealed claim 9 and disclosed by Yang or Buysch appear to be
identical or substantially identical.
Where, as here, the claimed and prior art products are
identical or substantially identical, the Patent and Trademark
Office 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
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, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
The record before us contains no proof of any kind that the
composition products of Yang and Buysch respectively do not
necessarily or inherently possess the appealed claim
9 characteristic or “condition” under consideration. On the
other hand, it is reasonable to believe that the prior art
compositions necessarily and inherently contain the same
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