Appeal No. 2003-1525
Application 09/462,876
from a product of the prior art, the claim is unpatentable even
though the prior art product was made by a different process.”).
Whether a rejection is under 35 U.S.C. § 102 or § 103, when the
appellants’ product and that of the prior art appear to be
identical or substantially identical, the burden shifts to the
appellants to provide evidence that the prior art product does
not necessarily or inherently possess the relied-upon
characteristics of the 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, 433-34 (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; In re Brown, 459 F.2d 531, 535, 173 USPQ 685,
688 (CCPA 1972).
As indicated above, the examiner’s burden is not merely to
provide a rationale “tending to show” that the claimed product
and that of the prior art are identical or substantially
identical. The burden is to provide evidence which is sufficient
to show that the claimed and prior art products actually do
appear to be identical or substantially identical.
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