Appeal No. 2005-1672
Application No. 09/833,866
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. [Footnote omitted.] 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. See In re Brown, 459 F.2d 531, 59 CCPA 1036,
173 USPQ 685 (1972).
On this record, the appellant has not come forward with evidence
to rebut the examiner’s prima facie case of unpatentability based
on similarities of processes and product characteristics (reduced
microbes and improved color for storage) involved. Accordingly,
we affirm the examiner’s decision rejecting claims 14 through 20
under Sections 102 and 103.
We turn next to the examiner’s rejection of claims 1, 3
through 13 and 22 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Roth and Nakayama. Claims 1, 12, 13
and 22 are directed to methods of treating ground (comminuted)
meats. Claim 1 requires a moisture adding step in which an
aqueous ammonium hydroxide can be added or water can be added to
form an aqueous ammonium hydroxide in situ (reacting added water
with ammonia gas to form an aqueous ammonium hydroxide). Claims
9
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