Appeal 2006-3116
Application 10/809,140
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, 186 USPQ 80, 82 (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
patentable their method which is clearly obvious in view of [the reference].
[Citation omitted.]”); cf. In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d
1655, 1657-58 (Fed. Cir. 1990) (“The Board held that the compositions
claimed by Spada ‘appear to be identical’ to those described by Smith.
While Spada criticizes the usage of the word ‘appear’, we think that it was
reasonable for the PTO to infer that the polymerization by both Smith and
Spada of identical monomers, employing the same or similar polymerization
techniques, would produce polymers having the identical composition.”).
We do not find in Appellants’ arguments any explanation or evidence
that Sawhney’s disclosure of a method in which the hydrogel forming
material is partially gelled upon extrusion teaches away from the claimed
method encompassed by claim 1. See generally, In re Kahn, 441 F.3d 977,
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