Appeal 2006-3071
Application 09/811,987
effective argument or objective evidence that the claimed process patentably
distinguishes over the process disclosed by Bauriedel, even though the
rejection is based on § 103(a). See, e.g., In re Best, 562 F.2d 1252, 1255-56,
195 USPQ 430, 433-34 (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.]”)
We are not convinced by Appellants’ arguments that Bauriedel would
have taught away from the claimed invention in view of the common
recitation of reactants and of the first stage prepolymers or addition product
(A). See generally, In re Kahn, 441 F.3d 977, 985-89, 78 USPQ2d 1329,
1334-38 (Fed. Cir. 2006) (“A reference may be said to teach away when a
person of ordinary skill, upon reading the reference would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” (quoting
In re Gurley, 27 F.3d 551, 553 [31 USPQ2d 1130, 1131] (Fed. Cir. 1994)));
In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1145-46 (Fed. Cir.
2004) (prior art “disclosure does not criticize, discredit, or otherwise
discourage the solution claimed”).
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