Appeal No. 2006-0916
Application No. 10/345,711
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. Best, 562 F.2d at 1255, 195 USPQ at
433-34.
In this case, Markusch describes a composite made by a
process substantially identical to that recited in appealed
claim 20 (the base claim for product-by-process claim 36). In
particular, the materials used in Markusch’s example 56 are
identical to those recited in appealed claim 20, and the
sequence of adding the materials differs only in one respect -
polyisocyanate is not the last component introduced. Under
these circumstances, the burden was properly shifted to the
appellants to demonstrate that the process recited in appealed
claim 20 yields a patentably distinct product. The appellants
failed to meet this burden of proof. Accordingly, we uphold the
examiner’s rejection of product-by-process claim 36 on this
additional basis.
The appellants contend that “there is no teaching nor
suggestion in Markusch et al. of the product of the process of
Claim 20 with its density and unexpected water resistant
properties.” (Appeal brief at 11.) This contention is without
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