Appeal No. 2007-0412 Page 8
Application No. 10/195,609
1 invention and competing fabrics, even though the competing fabrics are of
2 similar construction and were treated using similar processes, thus
3 dispelling any assumption of inherency grounded on the notion of “like
4 fabrics and like processes.”
5
6
7 PRINCIPLES OF LAW
8
9 1. “Where, as here, the claimed and prior art products are identical or
10 substantially identical … , the PTO can require an applicant to prove that the
11 prior art products do not necessarily or inherently possess the characteristics of
12 his claimed product.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433
13 (CCPA 1977). See also In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Cir.
14 1990).
15 2. “As a practical matter, the Patent Office is not equipped to manufacture
16 products by the myriad of processes put before it and then obtain prior art
17 products and make physical comparisons therewith,” In re Brown, 459 F.2d 531,
18 534, 173 USPQ 685, 688 (CCPA 1972).
19
20 ANALYSIS
21 The Examiner has a reasonable basis for finding that the claimed fabric
22 appears to be structurally identical to the fabrics described in the prior art and
23 therefore that the fabrics prima facie possess the Kawabata System properties
24 recited in the claims. Appellants contend that the fabrics described in the applied
25 prior art do not inherently possess the Kawabata System properties recited in the
26 claims.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013