Appeal 2006-2307
Application 10/370,686
Examiner’s rejection in that comparative Example 6 is part of the prior art
described by JP05-271645.
Whether a rejection is made under 35 U.S.C. § 102, or under
§ 103, it is well settled that when Appellant’s product and that of the prior
art appear to be identical or substantially identical the burden shifts to
Appellant to provide evidence that the prior art product does not necessarily
or inherently possess the relied upon characteristics (pressure sensitive
properties) of Appellant’s 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, 433-434 (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 In
re Best, 562 F.2d at 1255, 195 USPQ at 434. Here, appellant haves not
undertaken, much less persuasively discharged, that burden.
Concerning the Examiner’s obviousness rejection, we note that in
addition to the comparative Example 6 of JP05-271645, JP05-271645
further suggests a product corresponding to that of Appellant’s
representative claim 20. This is because JP05-271645 teaches that the
aqueous pressure sensitive blend can include a high Tg polymer component
having particle diameters in the range of 500 to 2,000 nm in addition to a
vinyl copolymer aqueous dispersion of particles corresponding to a size as
claimed. Representative claim 20 requires that the high Tg polymer
component of the blend must have an average particle size less than 500
6
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