Appeal No. 2005-1207
Application No. 10/126,342 Page 6
evidence that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed
product. See In re Spada, 911 F.2d 705, 708, 15 USPQ 1655, 1658
(Fed. Cir. 1990); In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ
594, 596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433 (CCPA 1977). The reason is that the Patent and
Trademark Office is not able to manufacture and compare products.
See Best, 562 F.2d at 1255, 195 USPQ at 434. Here, appellants
have not satisfied this burden.
In this regard, appellants maintain that the heating of the
particles results in the penetration of the surfaces of fibers by
particles and point to pages 5, 6 and 16-23 of their
specification for support. In an apparently alleged contrary
manner, appellants assert that Brooker uses adhesive polymers and
does not explicitly disclose heating the particles. However, at
page 6, lines 15-26 of appellants’ specification, appellants make
plain that particle heating has not been established as being
responsible for the fiber surface penetration. Rather, that
argued connection between the particle heating and penetration is
one of belief or theory, which appellants maintain they are not
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