Appeal No. 2006-1506 Page 8
Application No. 10/858,576
that is offered for comparison, as discussed in the briefs,
demonstrates results that are truly unexpected and commensurate
in scope with representative claim 1.
Hence, we conclude that the claimed subject matter as a
whole would have been obvious to one of ordinary skill in the
art, on this record.
Concerning the examiner’s anticipation rejection, we note
that when the appellants’ product and that of the prior art
appear to be identical or substantially identical, as here, the
burden shifts to the appellants to provide evidence that the
prior art product does not necessarily or inherently possess the
relied-upon characteristics of the appellants’ claimed product.
See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980); In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324, 326 (CCPA
1974). The reason is that the Patent and Trademark Office (PTO)
is not able to manufacture and compare products. See In re Best,
562 F.2d at 1255, 195 USPQ at 434; In re Brown, 459 F.2d at 535,
173 USPQ at 688 (CCPA 1972).
Concerning appellants’ burden of furnishing evidence to show
a patentable product distinction, appellants maintain that:
In Applicant’s pressure-sensitive adhesive, one can
visualize the structural characteristics, and therefore
the differences, between a polymer formed in the
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