Appeal No. 2003-0808
Application No. 09/343,334
property.4 In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977). Whether the rejection is based on inherency
under 35 U.S.C. § 102 or on 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 at 1255, 195 USPQ at 433-34.
Under these circumstances, we hold that Sauer alone
establishes a prima facie case of anticipation against appealed
claims 1 and 5. While the examiner’s rejection of appealed
claims 1 and 5 has been made under 35 U.S.C. § 103, a prior art
disclosure that anticipates under 35 U.S.C. § 102 also renders
the claim obvious under 35 U.S.C. § 103, for anticipation is the
epitome of obviousness. In re Baxter Travenol Laboratories, 952
F.2d 388, 391, 21 USPQ2d 1281, 1284-85 (Fed. Cir. 1991); In re
Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); In
re May, 574 F.2d 1082, 1089, 197 USPQ 601, 607 (CCPA 1978).
4 On this point, the appellants state that the recited
bromine index is measured according to a modified procedure
based on ASTM D2710 but fail to inform one skilled in the
relevant art the exact nature of the modifications. Hence, it
is inappropriate to place the burden of proof on the examiner in
this instance.
7
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