Appeal No. 2001-0773
Application No. 09/200,421
references are silent regarding such a characteristic of the
ceramic bodies. In essence, the examiner's rejections are based
upon a rationale that the ceramic bodies of the applied
references inherently exhibit the claimed surface area.
It is well settled that when a claimed product or process
reasonably appears to be substantially the same as a product or
process disclosed by the prior art, the burden is on the
applicant to prove that the prior art product or process does not
necessarily or inherently possess characteristics attributed to
the claimed product or process. See In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Manifestly, before
the burden is shifted to the applicant in such situations, the
initial burden is upon the examiner to demonstrate that the
claimed product or process reasonably appears to be substantially
the same as the prior art product or process. This is often
accomplished by, for instance, demonstrating that the processes
employed by the applicant and the prior art are so similar that
one would reasonably expect that the product prepared by the
process would be substantially the same.
In the present case we are not satisfied that the examiner
has met the initial burden. It is clear from appellants'
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