Appeal 2006-2150
Application 09/995,927
1997); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977). Therefore, it is appropriate to require Appellants to prove that the
solar cells disclosed by Ekins-Daukes do not necessarily or inherently
possess the “substantially no shear force” characteristics of the here-claimed
photovoltaic device. Best, 562 F.2d at 1255, 195 USPQ at 433. 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 alternatively, the burden of
proof is the same, and its fairness is evidenced by the inability of the Patent
and Trademark Office to manufacture products or to obtain and compare
prior art products. Id., 562 F.2d at 1255, 195 USPQ at 433-34.
Here, the Appellants have not carried their burden of proof. This is
because, as correctly explained by the Examiner in the above-noted
Supplemental Answer, both the Appellants in their Briefs and Dr. Anderson
in his Rule 1.132 Declaration have failed to address the specific
compositions disclosed by Ekins-Daukes. It follows that we hereby sustain
each of the § 102 and § 103 rejections advanced by the Examiner on this
appeal.1
1 In the event of further prosecution, particularly if the Appellants attempt to
prove that the solar cells of Ekins-Daukes do not actually possess the here-
claimed characteristic of exerting “substantially no shear force on a
neighbouring structure,” the Examiner should consider whether the afore-
quoted recitation renders the claims in violation of the second paragraph
requirements of 35 U.S.C. § 112. This is because, as correctly indicated by
the Examiner in his Answers and not disputed by the Appellants, the subject
Specification contains no definition or guidance as to the scope of shear
5
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