Appeal No. 2005-0314
Application No. 10/158,717
This argument is unconvincing. In this regard, we consider as
well taken the Examiner’s response to this argument on page 7 of
the answer wherein she correctly indicated that the claim under
review contains no recitation concerning the above argued feature
of “layer purity.”
It may be that the Appellants believe that their claimed paper
product possesses a “layer purity” characteristic which is not
possessed by the paper product of Phan. If this is the Appellants’
belief, it is their burden to support this belief with proof.
Concerning this last mentioned point, it is well settled that,
where (as here) the claimed and prior art products are identical
or substantially identical or are produced by identical or
substantially identical processes, 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 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 it’s 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, 562 F.2d 1252, 1255,
195 USPQ 430, 433-434 (CCPA 1977).
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