Appeal No. 2003-2126
Application No. 10/150,318
that his heating component may comprise any component having a
non-zero resistance which, of course, would include a low
resistance shunt resistor of the type taught by Melcher.
It is well settled that, where, as here, the claimed and
prior art products are identical or substantially identical, the
Patent and Trademark Office 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 U.S.C. § 102, on
“prima facie obviousness” under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness
is evidenced by the inability of the Patent and Trademark Office
to manufacture products or to obtain and compare prior art
products. In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430,
433-34 (CCPA 1977).
This reasoning applies to the apparatus claimed by the
appellant and disclosed by Melcher. Under the circumstances
recounted above, it is reasonable and fair to consider patentee’s
resistor 25 as possessing the heating characteristic of the here
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007