Appeal No. 2006-0817
Application 10/325,443
Furthermore, appellants have not established by effective argument or objective evidence
that they have obtained a different result than the reference using the same solvents and the same
materials in the same manner. See, e.g., 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; see also In re Sussman, 141 F.2d 267, 269-70, 60 USPQ 538, 541
(CCPA 1944) (“If appellant obtains a new product through reaction of the elements mentioned, it
must be due to some step in the process not included in the claim.”). Otherwise, to the extent
that Michal ‘285 Example 5 anticipates claim 1, the case of obviousness on this basis cannot be
rebutted with evidence. Fracalossi, 681 F.2d at 794, 215 USPQ at 571.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the Michal references with appellants’
countervailing evidence of and argument for nonobviousness in the brief and reply brief, and
based thereon, conclude that the claimed invention encompassed by appealed claim 1 would
have been obvious as a matter of law under 35 U.S.C. § 103(a). See generally, In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
We do not reach the same conclusion with respect to appealed claims 2 through 4 and 6
through 35. These claims require at least a hydrogel polymer with a number of claims requiring
a quaternary amine acrylate polymer or, more specifically, such a polymer with greater than
50,000 repeating units, as we have interpreted the representative claims 2, 11, 12, 18 and 27
above.
The examiner fails to find in Michal ‘285 a hydrogel polymer, but reasons that the
“amino functional acrylate groups (see appellants, claim 11 [sic, claim 12])” of the depicted
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