Appeal No. 2002-1567 Page 6
Application No. 09/197,729
identical or substantially identical as is the case here, the
burden fairly 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 Trademark Office is not
able to manufacture and compare products. See Best, 562 F.2d at
1255, 195 USPQ at 434.
While appellants seemingly urge that some selection in
manufacturing may be required in achieving the claimed cushioning
properties, appellants have not substantiated that argument by
way of test results or by otherwise showing that the products
suggested by Aylward would not have the claimed cushioning
characteristic. Indeed, such arguments of counsel have little
merit since actual test results fairly comparing appellants’
product with the product of Aylward have not been furnished.
Consequently, the record of this application does not establish
that there would have been any difference in the cushioning
performance of appellants’ product and that of Aylward.
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