Appeal No. 2005-1574
Application 09/753,428
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, 186
USPQ 80, 82 (CCPA 1975) (“Appellants have chosen to describe their invention in terms of
certain physical characteristics . . . . Merely choosing to describe their invention in this manner
does not render patentable their method which is clearly obvious in view of [the reference].
[Citation omitted.]”); In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 325-26 (CCPA 1974)
(citing In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972)) (“In Brown, the
court was in effect saying that the [PTO] bears a lesser burden of proof in making out a case of
prima facie obviousness for product-by-process claims because of their peculiar nature than
would be the case when a product is claimed in the more conventional fashion.”); cf. Spada, 911
F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (“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.”); In re Aller, 220 F.2d
454, 456-58, 105 USPQ 233, 235-37 (CCPA 1955) (“[W]here general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.”).
We are not convinced otherwise by appellants’ argument that Cope employs “[a] vacuum
draw on the shaper [that] helps maintain the profile shape as the cellular materials expands” (col.
5, ll. 34-35) which “necessitates a smooth surface to maintain the vacuum” (brief, page 7).
Indeed, Cope thus discloses only that the profile shape is maintained, not that the vacuum helps
smooth the surface of the profile. Furthermore, we find that a vacuum can be maintained even if
less than the entire surface of the profile is in contact with the smooth wall of the shaper. This is
because only enough material must be in contact with the cylinder wall sufficient to form a seal
therewith to create the vacuum.
- 14 -
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007