Appeal 2006-2949
Application 10/012,768
shredding component characterized as “‘metal to fiber’ interaction.” On this
record, we find that it reasonably appears that the claimed at least one
irregular distortion in at least one thread element imparted by the mechanical
shredding component of the process specified in claim 1 is identical or
substantially identical to an irregular distortion imparted to at least one
thread element by the mechanical shredding process of Milding even though
the latter process is not conducted in a liquid.
Accordingly, the burden has shifted to Appellants to submit effective
argument or objective evidence in order to patentably distinguish the
claimed hydroentangled nonwoven fabrics encompassed by claim 1 over the
teachings of the references even though the ground of rejection is under §
103(a). See generally, In re Best, 562 F.2d 1252, 1254-56, 195 USPQ 430,
432-34 (CCPA 1977) (“Where, as here, the claimed and prior art products
are identical or substantially identical, or are produced by identical or
substantially identical 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 (CCPA 1971)]. Whether the rejection is based on ‘inherency’
under 35 USC 102, on “prima facie obviousness” under 35 USC 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 (CCPA 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
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