Appeal No. 2005-0182
Application No. 09/783,392
These arguments are not persuasive. The examiner has
established that the prior art seat belts with their separate
raised surfaces are identical or substantially identical to the
subject matter as set forth in claim 1 on appeal, namely a seat
belt with an embossed printed face on one side (Answer, pages 3-4).
Merely claiming a new function or purpose of the seat belt
treatments of the prior art does not render the claims patentable
(Answer, page 4; see In re Best, supra). As set forth by the court
in In re Best, 562 F.2d at 1255, 195 USPQ at 433-34:
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. See In re
Ludtke, supra. 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. [footnote
omitted].
As discussed above, we determine that the examiner has met the
initial burden of proof and shifted this burden to appellant.
Appellant’s assertion that the coefficient of friction of the prior
art seat belt “may very well be lower” is not supported by any
objective evidence.
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