Appeal No. 2003-0695 Page 6
Application No. 09/732,014
Whether the rejection is under 35 U.S.C. § 102 or 35 U.S.C.
§ 103, in a case such as this where the critical function for
establishing novelty or unobviousness in the claimed subject
matter is recited as a functional characteristic or property of
the claimed article and that property reasonably appears to be a
characteristic of the prior art article made from the same
materials, it is incumbent upon appellants to prove that the
prior art article does not in fact possess the characteristics
relied on as distinguishing the claimed invention from that prior
art. See In re Spada, 911 F.2d 705, 708, 15 USPQ 1655, 1658
(Fed. Cir. 1990); 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 (CCPA 1977). Here, appellants have not satisfied this
burden.
Concerning this matter, we do not agree with appellants’
contention that the applied references must explicitly describe
and recognize the here claimed functional characteristic.
Rather, all that is required is that the examiner shows that the
prior art product is identical or substantially identical to the
claimed product. Here, the examiner reasonably determined that
the claimed and prior art products are either identical or
substantially identical because the references relied upon by the
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