Appeal No. 2003-1893
Application No. 09/770,018
and 47-48, we find that such cross-linking necessary or
inherently occurs in Marvil’s fluoropolymer since Marvil’s
fluoropolymer embraced by claim 1 on appeal is subjected to the
same condition as that claimed as indicated supra. As the court
in In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977) stated:
Where, as here, the claimed prior art products are
identical or substantially identical, or are produced
by identical or substantially identical processes, the
PTO can require an applicant to prove that the prior
art products do not necessarily or inherently possess
the characteristics of his claimed product. . . .
Whether the rejection is based on “inherency” under
35 USC 102, on “prima facie obviousness” under 35 USC
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.
However, the appellants have not demonstrated that the cured
fluoropolymer of Marvil is not cross-linked. It follows that
Marvil would have rendered the claimed subject matter
anticipatory within meaning of 35 U.S.C. § 102.
Even if we were to determine that Marvil does not provide
sufficient teachings for inherency, our conclusion would not be
altered. As indicated supra, Marvil does not expressly mention
that its outer fluoropolymer coating is a “cross-linked”
fluoropolymer coating. Marvil, however, teaches “curing” the
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