Appeal No. 2002-0702
Application No. 09/711,324
186 UPQP 80, 82-83 (CCPA 1975) and Ex parte Obiaya, 227 USPQ 58,
60 (BPAI 1985).
Therefore, it is appropriate to require the appellants to
prove that these etchant mixtures would not necessarily and
inherently possess the here claimed characteristic. 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 (i.e., etchant mixtures) or to obtain and
compare prior art products. See In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433-34 (CCPA 1977).
The foregoing circumstances reflect that the appellants have
simply discovered a new property or characteristic of etchant
compositions which fall within the broad disclosure of Ding and
which at a minimum would have been suggested by patentee’s
disclosure. It is here appropriate to remind the appellants that
the discovery of a new property of a previously known composi-
tion, even if unobvious from the prior art, cannot impart
patentability to such a composition. See In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); also see Ex
parte Obiaya, 227 USPQ at 60.
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