Appeal No. 2006-0511 Page 7
Application No. 10/258,312
it possesses the authority to require the applicant to
prove that the subject matter shown to be in the prior
art does not possess the characteristic relied on.
[Citation omitted]. This burden ... is applicable to
product and process claims reasonably considered as
possessing the allegedly inherent characteristics.
...
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. [Citation and footnote
omitted]. In re Best, 911 F.2d at 708-09, 195 USPQ at
433-34.
Accordingly, in view of the discussion above, the burden of proof
has shifted to appellants to prove that the “subject matter shown
to be in the prior art does not possess the characteristic relied
on.” In re Best, supra. However, we determine that appellants’
reliance on the Examples in their specification (Brief, pages 3-7)
does not meet this burden of proof. The only Examples that compare
materials similar to those of Wang are Comparative Examples 1C, 2C
and 3C (e.g., see page 20 of the specification). However, the
comparison of the Comparative Examples with the Examples of
appellants’ invention is not convincing for several reasons.
First, Example 1 (specification, page 18) does not disclose the
molecular weight of either poly(styrene/isoprene/styrene) block
copolymer used, but Comparative Example 1C (specification, page 20)
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