Appeal 2006-3304
Application 10/203,905
Levy, 17 USPQ2d at 1464. More specifically, the position is supported by
the findings discussed above and in the Answer concerning the teachings of
Marmon and Groten. Also, the position is supported by the Examiner’s
technical reasoning that the applied prior art and the Appellants must
achieve the same degree of splitting in light of the similarities between the
polymeric materials and splitting methods disclosed in the prior art
references and in the subject specification. In this regard, it is significant
that the Appellants do not dispute the Examiner’s findings regarding the
applied prior art and do not contest the Examiner’s technical reasoning
concerning the aforementioned similarities.
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the Patent and Trademark Office 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, and
its fairness is evidenced by the inability of the Patent and Trademark Office
to manufacture products or to obtain and compare prior art products. In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See also
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990).
On the record before us, the Appellants have submitted no proof that
the fabrics of Groten and Marmon do not actually possess the claim 13
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