Appeal No. 2002-0148
Application No. 09/104,675
specification to determine whether the prior art disclosure
reasonably contains the claimed gamma ratio. As explained by the
examiner:
... the examiner has not relied upon the present
specification as being prior art. Rather, it is relied upon
solely for its teachings of what features of the material
(i.e. additives) cause the claimed gamma ratios to be
realized since the reference does not provide that data
(Examiner’s Answer, page 6, lines 13-16).
The examiner has found that the composition of example 2 of
Bohan, if the amount of masking coupler is reduced to its
preferred concentration of less than 0.01 mmol/m2, would have the
claimed gamma ratios. This understanding of the prior art
properties is based upon the appellants’ teaching that the
claimed gamma ratios can be realized by limiting or excluding
color masking couplers from the elements of the claimed
invention. (Examiner’s Answer, page 6, lines 4-11)(See also the
specification, page 15, lines 14-15).
As stated in In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (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.
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