Appeal No. 2006-2484 Παγε 6
Application No. 10/837,337
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 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 further regard to this matter, we note that
representative claim 1 does not require any particular degree of
EMI/RFI shielding capability for the recited composition. Nor
have appellants presented evidence to establish that the
composition of DeMoss has no EMI/RFI shielding capability when
used as a sealant.
Thus, appellants’ argument that the claimed EMI/RFI
shielding characteristic is not taught or suggested by DeMoss is
unpersuasive on this record.
Appellants argue that DeMoss does not teach or suggest a
preformed composition in shaped form as representative claim 1
requires. However, DeMoss teaches that their formulation can be
extruded and used as a sealant. Thus, DeMoss would have
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