Appeal No. 2004-1451
Application No. 09/360,262
and oil holding capacities. We note that appellants have not
proffered any convincing line of reasoning, let alone the
requisite objective evidence, which refutes the examiner's
reasonable conclusion that the fiber materials of Redding
inherently undergo a modification in their water and oil holding
capacities upon subjection to the abrupt pressure changes
employed by Redding. It is well settled that when a claimed
process reasonably appears to be substantially the same as a
process disclosed by the prior art, it is eminently fair to place
on appellant the burden of proving that the prior art process
does not necessarily or inherently possess characteristics
attributed to the claimed process. In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433 (CCPA 1977). It has long been
recognized that the PTO does not have the facilities or
wherewithal to conduct experimental tests on prior art processes
and products, and it is noteworthy that in the present case one
of the applicants, Bruce K. Redding Jr., is the patentee of the
applied reference. It would seem that it would not be an undue
burden on appellants to present evidence regarding the patented
process of Redding, one of the present inventors.
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