Appeal No. 2006-0295
Application 10/053,926
Thus, the burden falls on appellants to establish by effective argument and/or objective
evidence establishing that the claimed sago starch containing compositions patentably
distinguish the sago starch containing compositions taught by Eden even though the rejection is
based on § 103(a). See In re Woodruff, 919 F.2d 1575, 1577-78, 16 USPQ2d 1934, 1936-37
(Fed. Cir. 1990) (“The law is replete with cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims. [Citations omitted.]
These cases have consistently held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range. [Citations omitted.]”); In re Best, 562 F.2d 1252, 1255-56,
195 USPQ 430, 433-34 (CCPA 1977) (“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. 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.]”); Skoner,
517 F.2d at 950-51, 186 USPQ at 82-83; Aller, 220 F.2d at 456-58, 105 USPQ at 235-37; cf.
Spada, 911 F.2d at 708-09, 15 USPQ2d at 1657-58 (Fed. Cir. 1990) (“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 the absence of such argument and/or evidence, it reasonably appears with respect to
claims 10 and 20 that appellants have merely elucidated the mechanism as well as identified a
new benefit of an old process, and discovered a new property of a product known in the prior art,
which will not render the old process and old product again patentable. See, e.g., Spada,
911 F.2d at 707, 15 USPQ2d at 1657; Woodruff, 919 F.2d at 1577, 16 USPQ2d at 1936;
Titanium Metals, 778 F.2d at 782-83, 227 USPQ at 779; W.L. Gore & Assocs. v. Garlock, Inc.,
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