Appeal No. 2003-1513
Application No. 09/326,412
be critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to
prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.”); accord 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.
The appellant contends that “the much softer tapered
portion 26 [of Baker’s device] would [] lack the necessary
rigidity to cause member 20 to act as a means for preventing the
expandable element from folding over on itself during placement
or implantation.” (Supplemental appeal brief, page 3.) The
appellant’s contention, however, is based on conjecture, not
evidence.
For these reasons, we affirm.
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