Appeal 2006-2835
Application 10/033,496
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. See In re Ludtke, [441 F.2d 660, 169 USPQ 563 (C.C.P.A.
1971)]. Whether the rejection is based on “inherency” under 35 USC § 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 PTO’s
inability to manufacture products or to obtain and compare prior art
products. [Footnote and citation omitted.]”); In re Skoner, 517 F.2d 947,
950-51, 186 USPQ 80, 82-83 (C.C.P.A. 1975) (“Appellants have chosen to
describe their invention in terms of certain physical characteristics . . . .
Merely choosing to describe their invention in this manner does not render
patentable their method which is clearly obvious in view of [the reference].
[Citation omitted.]”).
The Examiner does not identify a specific imaging member
embodiment disclosed by Dontula ‘976 that reasonably appears to fall within
appealed claim 18 because of the specific materials in that product and the
specific properties thereof. Instead, the Examiner points to Dontula ‘976
generic claim 1 and certain dependent claims, taking the position that these
patent claims “disclose all the features of instantly claimed invention . . .
except the modulus and toughness properties of each layer” (Answer 3).
The Examiner states that the modulus ranges for the polymer closed cell
foam core sheet and polymer top and bottom sheets of the base component
disclosed by Dontula ‘976 at col. 6, ll. 23-29, “reads on the modulus of each
layers of instant invention as claimed” (Answer 3).
The Examiner further states that
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