Appeal 2006-1080
Application 10/109,343
possess the characteristics of his claimed product. See In re Ludtke,
[441 F.2d 660, 169 U.S.P.Q. 563 (CCPA 1971)]. 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. [Footnote and citation
omitted.]”); In re Skoner, 517 F.2d 947, 950-51, 186 U.S.P.Q. 80, 82-83
(CCPA 1975) (“Appellants have chosen to describe their invention in terms
of certain physical characteristics . . . . Merely choosing to describe their
invention in this manner does not render patentable their method which is
clearly obvious in view of [the reference]. [Citation omitted.]”); cf. In re
Spada, 911 F.2d 705, 708-09, 15 U.S.P.Q.2d 1655, 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.”).
We are of the opinion that Appellants have not carried their burden.
In view of the teachings and inferences that one of ordinary skill in this art
would have reasonably found in Jackson, we disagree with Appellants’
position that Jackson would not have taught penetration of the coal tar pitch
coating into the surface of a porous substrate as claimed (Substitute Br. 4, 5,
7, and 8). Indeed, to the contrary, the mere fact that Jackson is silent with
respect to penetration does not patentably distinguish the claimed article
7
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