Appeal No. 2004-1092 Page 4
Application No. 10/014,425
227 USPQ 964, 966 (Fed. Cir. 1985)(“If the product in a
product-by-process claim is the same as or obvious from a product
of the prior art, the claim is unpatentable even though the prior
product was made by a different process. ”). Moreover, see In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977),
wherein the predecessor of our reviewing court explained as
follows:
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. [Citations and footnotes
omitted.]
Moreover, we agree with the explanation of Jin offered in a
remand section of the prior Board opinion (Appeal No. 1997-1793)
in parent application No. 08/528,044, now U.S. Patent No.
6,406,532. In that opinion, Jin (referred to as Hattori) was
described as teaching:
that the disclosed binary oxides are produced by a
coprecipitation method involving the steps of
subjecting a mixed solution of ferric nitrate and
titanium tetrachloride to hydrolysis with aqueous
ammonia at a pH of 8-9 to form a precipitate, washing
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