Appeal No. 2004-0837
Application No. 09/778,481
the rope that is most likely to wear when the portion is away
from the sheave.” On this record, we answer this question in the
affirmative.
The examiner finds, and the appellants do not dispute, that
the sensor described in Hirama and/or Yamagami is placed in a
location such that it monitors “nearly the entire length of the
[elevator] rope” for any defects. Thus, it is reasonable for the
examiner to conclude that the sensor described in Hirama and/or
Yamagami is placed in a location useful for obtaining information
on “the portion of the rope most likely to wear” which is
necessarily embraced by “nearly the entire length of the rope”
shown in Hirama and/or Yamagami. On this record, the appellants
have not demonstrated that the sensor of Hirama and/or Yamagami
would not be able to obtain information on the portion of the
rope that is most likely to wear. As held by the predecessor to
our reviewing court in In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433-34 (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
products do not necessarily or inherently posses 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. (Footnotes and citations omitted).
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