Appeal 2006-1581
Application 10/2006-1581
asserted prima facie case the applicant may argue that the
inference of lack of novelty was not properly drawn, for
example if the PTO did not correctly apply or understand the
subject matter of the reference, or if the PTO drew unwarranted
conclusions therefrom. However, when the PTO shows sound
basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing
that they are not. In re King, 801 F.2d 1324, 1327, 231 USPQ
136, 138 (Fed. Cir. 1986); In re Ludtke, 441 F.2d 660, 664, 169
USPQ 563, 566 (CCPA 1971). Spada offered no such showing.
The Board suggested that Spada provide some scientific
explanation for the asserted differences between the properties
of his compositions and those described by Smith. While an
inventor is not required to understand how or why an invention
works, we think that the PTO was correct, in view of the
apparent identity of the compositions, in requiring Spada to
distinguish his compositions from those of Smith. Although
newly discovered properties can be the basis of claims to novel
polymers, E.I. DuPont de Nemours & Co. v. Phillips Petroleum
Co., 849 F.2d 1430, 1435, 7 USPQ2d 1129, 1133 (Fed. Cir.),
cert. denied, 109 S.Ct. 542 (1988), Spada did not overcome,
with argument or evidence, the apparent chemical identity of
his polymers and those of Smith. Spada showed no error, in
science or in law, in the Board's holding that the products
appeared to be the same and thus that Spada's products were not
new.
In the instant case, as pointed out by the Examiner on page 10 of the
Answer, Appellants’ claims are product-by-process claims. As stated in In
re Spada, in view of the apparent identity of the compositions, it is
Appellants’ burden to distinguish his processing aid from those of the
applied art. Appellants have not convincingly done so, for the following
reasons.
First, on pages 3-5 of the Reply Brief, Appellants discuss
Comparative Example 5 of Matsuba in an effort to show that Matsuba does
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