Appeal No. 2004-2111
Application No. 09/535,550
identity of the claim 28 alloy and the applied prior art alloys
which renders the examiner’s inherency determination a reasonable
one.
Under these circumstances, we share the examiner’s viewpoint
that, insofar as claim 28 is concerned, the appellant has simply
discovered a previously unappreciated property of the alloy
compositions disclosed in each of the applied references. See
Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d
1943, 1946-47 (Fed. Cir. 1999) and In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Also see Schering
Corp. v. Geneva Pharmaceuticals Inc., 339 F.3d 1373, 1377-80, 67
USPQ2d 1664, 1667-69 (Fed. Cir. 2003).
It is here appropriate to reiterate the examiner’s point
that, where the claimed and prior art products are identical (as
in the circumstance before us), 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 products. 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
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