Appeal 2006-0990
Application 10/209,369
I further concur with the majority of this panel that this application
must be remanded to the Examiner. I am of the opinion that the Examiner
must consider whether one of ordinary skill in this art routinely following
the teachings of either or both of the Warzelhan references, and indeed, of
any other prior art developed by the Examiner, would prima facie reasonably
arrive at the identical or substantially identical polymers and other products
encompassed by the appealed claims within the meaning of 35 U.S.C.
§ 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 U.S.C. § 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)); cf. Spada, 911
F.2d at 708-09, 15 USPQ2d at 1657-58.
clj
E.I. du Pont de Nemours and Company
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Barley Mill Plaza 25/1128
4417 Lancaster Pike
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