Appeal No. 2005-1369
Application 10/307,464
than the process by which it is made (i.e., the process of
applying the polymer film by extrusion or by hot melt adhesion
as recited in claim 1). See In re Thorpe, 777 F.2d 695, 697,
227 USPQ 964, 966 (Fed. Cir. 1985). On the record of this
appeal, the claim 1 product including the polymer film thereof,
though made by a different extrusion or hot melt adhesion
process, is indistinguishable from the product of Cavagna.
Concerning these matters, it is the appellants’ basic
contention that the examiner has the burden of showing unpatent-
ability rather than the appellants’ burden to show the contrary.
Under the circumstances before us, this contention is not well
founded. Where, as here, the claimed and prior art products
appear to be identical, 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, “prima facie obviousness” 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, 562 F.2d 1252, 1255, 195 USPQ
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