Appeal No. 2005-0279
Application No. 10/036,708
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 obviosuness” 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
and compare prior art products. In re Best, 652 F.2d 1252, 1255,
195 USPQ 430, 433-34 (CCPA 1977).
This burden of proof has not been carried by the appellants
on the record of this appeal for the reasons fully detailed above
and in the answer. We hereby sustain, therefore, the examiner’s
Section 102 and Section 103 rejections of all appealed claims
based on the patent to Wynne.
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