Appeal No. 2004-0450 Page 11
Application No. 09/785,936
(CCPA 1977):
Where, as here, the claimed and 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 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 PTO's inability to manufacture
products or to obtain and compare prior art products [footnote and
citations omitted].
Nor does the disclosure of a non-preferred embodiment in the ‘343 patent detract from
the examiner’s position.
CONCLUSION
Accordingly, for the reasons set forth in the body of this opinion, we affirm the
rejection of claim 79 under 35 U.S.C. § 102 or 35 U.S.C. § 103. As previously
indicated, claims 80 through 94, 97 through 111, 113 through 118, and 120 through 129
fall together with claim 79.
The examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
)
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