Appeal No. 2005-0931
Application 10/006,679
examiner’s position that it reasonably appears from this substantial evidence that that claimed
and Araki thin film magnets are identical or substantially identical because they are produced by
the identical or substantially identical process, even though, as the examiner points out, Araki is
silent with respect to the separation of the Nd2Fe14B type crystalline main phases with
amorphous phases and the precise temperature range for the substrate of ± 2°C. Thus, the
burden falls upon appellants to establish by effective argument and/or objective evidence that the
claimed invention patentably distinguishes over Araki, whether the rejection is considered to be
based on § 102(b) or § 103(a). See, In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-
58 (Fed. Cir. 1990) (“The Board held that the compositions claimed by Spada ‘appear to be
identical’ to those described by Smith. While Spada criticizes the usage of the word ‘appear’, we
think that it was reasonable for the PTO to infer that the polymerization by both Smith and
Spada of identical monomers, employing the same or similar polymerization techniques, would
produce polymers having the identical composition,” shifting the burden to appellant to show
that the products are not identical); In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34
(CCPA 1977) (“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, [441 F.2d 660, 169 USPQ 563 (CCPA
1971)]. 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 and citation omitted.]”); In re Skoner, 517 F.2d 947, 950-51, 186
USPQ 80, 82-83 (CCPA 1975) (the description of the claimed invention in terms of certain
physical characteristics not used in the reference, does not patentably distinguish the claimed
invention over the reference where the examiner found that identical means were used in an
attempt to achieve identical results such that the reference can be considered to inherently
discloses the claimed invention, even though the examiner could not compare the process
described by appellants and disclosed in the reference).
Accordingly, since a prima facie case of anticipation and a prima facie case of
obviousness has been established over Araki, we have again evaluated all of the evidence of
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