Appeal No. 2006-1218
Application No. 10/601,884
All of the claims on appeal are rejected under 35 U.S.C.
§§ 102(b)/103(a) as being unpatentable over Sellers.
Rather than reiterate the respective positions advocated by
the Appellants and by the Examiner concerning these rejections,
we refer to the brief and to the answer respectively for a
complete exposition thereof.
OPINION
For the reasons provided below, the 35 U.S.C. §§ 102(b)/
103(a) rejections are sustained.
Generally, when an examiner has set forth prior art showing
that a prior art product is identical or substantially identical
to that claimed by an applicant, then the burden of proof shifts
to applicant to demonstrate that the prior art and claimed
products do not possess the same characteristics. See In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). The
court in Best articulated this principle and the reasons
therefore as follows:
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 U.S.C. § 102, on ‘prima facie
obviousness’ under 35 U.S.C. § 103, jointly or
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