Appeal 2006-1207
Application 10/354,491
tape of Wilhelm provides hoop reinforcement, “even if all the fibers are
perpendicular to the hoop direction” (Answer 9). The Examiner’s technical
reasoning in support of the inherency position regarding the “hoop
reinforcement” characteristic under consideration is adequate to establish a
prima facie case for the following reason.
Appellant’s invention addresses the problems related to “stronger
steels [that] tend to suffer from increased brittleness, corrosion, and
difficulties associated with welding, bending and laying during installation”
(Spec. 1). Like Appellant, Wilhelm’s invention is directed to “corrosion
protection . . . of steel pipes” (Translation 1). We also note that both
disclose the use of a joint tape comprising a resin curable matrix reinforced
with fibers wrapped around the pipe joint (Translation 8; Spec. 6-7).
Appellant and Wilhelm, thus, are directed to at least one common problem
(i.e., corrosion) with steel pipes and employ what appears to be the same
type of joint tape to solve this problem. Thus, if wrapping the joint with a
composite joint tape achieves the common goal of preventing corrosion, it is
fair to say that it also provides “some degree of hoop reinforcement,” as
urged by the Examiner (Answer para. bridging 8 and 9).
In a situation where, as here, the claimed and prior art products appear
to be identical, the Patent and Trademark Office can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433 (CCPA 1977). Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, or on “prima facie obviousness” under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007