Appeal 2006-1483
Application 10/159,395
17. As held by the predecessor to our reviewing court in In re Best,
562 F.2d 1252, 1255, 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…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.
(Footnotes and citations omitted).
However, the Appellants have not supplied sufficient factual evidence to
distinguish the claimed tissue papers from Morgan’s tissue papers. Rather,
the Appellants argue that:
The claimed feature is at least one foreshortening ridge
spaced apart in the z direction from a plurality of lower density
regions that extend in the z direction from a plane defined by a
plurality of higher density regions. The foreshortening ridge
extends in the x-y plane. Each of the cited figures provides a
single z-x planar view of a paper sample. Nothing more than a
single point of the x-y or z-y planes is discernable from the
figures. The figures do not provide sufficient data to support
the contention that the claimed feature is inherent in the cited
papers.
…
Appellant submits that the figures of the reference were
selected to illustrate the paper features described in the
reference. That is the figures are representative of the layered
nature of the illustrated papers. Since the reference does not
teach or suggest a foreshortening ridge extending from a lower
density region and spaced apart from the plane of the paper in
the z direction there is no basis to assume that the data provided
by the figures represents any type of trend or average that may
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