Appeal No. 2002-0206
Application No. 09/121,725
Further, “[w]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. 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.”
In re Best, 562 F.2d 1252,1255 195 USPQ 430, 433-34 (CCPA 1977).
The burden of showing that the prior art process of, e.g.
Yasushi’s Embodiment 1, does not act to reduce the pathogenic
organisms (e.g. Vibriones) in oysters, correctly falls to the
appellant after the examiner has put forth evidence that the
result is inherent and such a finding is made. The appellant has
not carried that burden, consequently the prima facie case of
anticipation of claims 6 and 7 stands.
F. Additional Arguments
The appellant has raised several additional arguments in
favor of patentability, which are more procedural in nature than
substantive, to which we now turn.
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