Appeal No. 2002-1107 Page 6
Application No. 09/662,540
of Example 36 of Koleske reasonably satisfies the claimed
requirement for a monomer and oligomer in the amounts claimed.
Moreover, regarding the product of representative claim 18,
we further note that appellants state:
More particularly, it is not known whether the
mixing of one or more of the claimed components results
in some sort of a reaction taking place such that when
the final product is analyzed for the individual
components, and claimed amounts of each present
therein, whether the results will be different from the
starting materials. Thus, it is quite conceivable that
when the final product is analyzed, a smaller amount of
each claimed component may be present than what was
first used due to some side reaction that has taken
place.
Against that background, appellants’ argument that Koleske
does not teach use of an amount of epoxy functional monomer as
here claimed cannot be found persuasive. Whether a rejection is
under 35 U.S.C. § 102 or § 103, when appellants’ product and that
of the prior art appears to be identical or substantially
identical, the burden shifts to appellants to provide evidence
that the prior art product does not necessarily or inherently
possess the relied upon characteristics of appellants’ claimed
product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594,
596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-434 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ
324, 326 (CCPA 1974). The reason is that the Patent and
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