Appeal No. 2006-0230 Page 5
Application No. 09/864,083
Appellants focus our attention (Brief, pages 5-7), on the fact that Gordon
does not address the pH of the compositions disclosed therein. In this regard,
appellants argue that since Gordon does not teach a pH of about 5.5 to about
8.0, Gordon does not teach all the limitations of appellants’ claimed invention and
therefore cannot render appellants’ claimed invention prima facie obvious. Id.
However, as we understand the examiner’s argument (Answer, page 4),
compositions having similar ingredients would have a similar pH. Stated
differently, given their similar ingredients, it would be reasonable to expect that
the pH of Gordon’s compositions would inherently be the same as, or within, the
range set forth in appellants’ claim. As set forth in In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-434 (CCPA 1977), footnote omitted:
Where, as here, the claimed and prior art products are identical or
substantially identical, … 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.... Whether the rejection
is based on ‘inherency’ under 35 U.S.C. § 102, on ‘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
PTO’s inability to manufacture products or to obtain and compare
prior art products.
Apparently recognizing the burden placed on them by Best, appellants
direct our attention to Exhibit 1 of the Brief which lists U.S. Patents 5,889,054
(‘054), 5,962,526 (‘526), and 5,554,652 (‘652). Upon review of the three patents
we note that the ‘652 patent is a continuation of United States Patent No.
5,470,880 (‘880). The ‘054 and ‘526 patents are both a continuation of United
States Patent 5,691,378, which in turn is a continuation of the ‘880 patent.
Therefore, all three patents cited by appellants have the same disclosure.
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