Appeal 2006-2897
Application 10/074,715
characteristics” of their claimed preserving composition. In re De Lajarte,
337 F.2d 870, 874, 143 USPQ 256, 258 (CCPA 1964).
Relevant to the language “being capable of preserving thyroid
stimulating hormone,” when prior art products and a claimed product are
identical or only slightly different,
a rejection under 35 U.S.C. § 103 is indicated, and “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 . . . . 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 (footnote omitted).” In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (Cust.
& Pat. App. 1977). [In re Fitzgerald, 619 F.2d 67, 70, 205
USPQ 594, 596 (CCPA 1980).]
“A long line of cases confirms that one cannot establish novelty by claiming
a known material by its properties.” In re Crish, 393 F.3d 1253, 1258,
73 USPQ2d 1364, 1368 (Fed. Cir. 2004). When “the prior art evidence
reasonably allows the PTO to conclude that a claimed feature is present in
the prior art, the evidence ‘compels such a conclusion if the applicant
produces no evidence or argument to rebut it.’ Spada, 911 F.2d at 708 n. 3.”
Crish, 393 F.3d at 1259, 73 USPQ2d at 1369.
The “existence of overlapping or encompassing ranges shifts the
burden to the applicant to show that his invention would not have been
obvious.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1383
(Fed. Cir. 2003). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d
1934, 1936 (Fed. Cir. 1990).
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