Appeal 2006-1593
Application 09/737,413
Concerning the correspondence of the aforementioned disclosure of
the device of Badesha ‘643 and the transfix member device required by
Appellants’ representative claim 20, we note that the substrate called for in
claim 20 can be formed from a metal or alloys and the intermediate layer
from a silicone elastomer (Specification 20). Moreover, claim 20 is open to
the shape of the transfix member and Appellants provide that a variety of
transfix device forms are suitable, including, inter alia, strip, drum, cylinder,
and belt constructions (Specification 22). While Badesha ‘643 calls the
multi-layered device disclosed therein a fuser based on the use of the device
in a printing machine by Badesha ‘643, the structure of the fuser device of
Badesha ‘643 corresponds with the structure recited in representative claim
20.
Whether a rejection is made under 35 U.S.C. § 103 as here, or under
§ 102, it is well settled that when Appellants’ product and that of the prior
art appear to be identical or substantially identical the burden shifts to
Appellants to provide evidence that the prior art product does not necessarily
or inherently possess the relied upon characteristics of Appellants’ claimed
product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324, 326 (CCPA
1974). The reason is that the Patent and Trademark Office is not able to
manufacture and compare products. See Best, 562 F.2d at 1255, 195 USPQ
at 434.
In light of the above discussion, Appellants’ arguments concerning a
lack of suggestion and/or a lack of a reasonable expectation of success in
combining either of Badesha ‘504 or Swift with Badesha ‘643 are unavailing
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