Appeal No. 2007-0412 Page 9
Application No. 10/195,609
1 As noted earlier, neither Willbanks ‘952 nor Willbanks ‘733 explicitly
2 describe the Kawabata System properties recited in the claims.
3 The examiner has shown, and appellants do not dispute that both
4 Willbanks ‘952 and Willbanks ‘733 disclose each structural element of the
5 claimed fabric. The fabric disclosed in the Willbanks references and the claimed
6 fabric therefore reasonably appear to be physically identical.
7 The burden therefore properly shifts to Appellants “to prove that the prior
8 art [i.e., Willbanks] products do not necessarily or inherently possess the
9 characteristics [i.e., the Kawabata System properties] of [their] claimed product.”
10 In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
11 We decline to credit the evidence appellants have submitted to show that
12 the Willbanks fabrics do not inherently possess the claimed properties.
13 Experimental results from a study comparing Kawabata System properties
14 for the claimed and Willbanks fabrics showing the Willbanks fabrics possessing
15 Kawabata System properties different from those claimed would have been the
16 most straightforward way to show and the best evidence to support Appellants’
17 contention that the Willbanks’ fabrics do not possess the Kawabata System
18 properties recited in the claims. But, we have not been favored with results from
19 any such test, nor do we know whether Appellants attempted such tests, albeit
20 they had every opportunity to do so during prosecution. An experimental study is
21 described in the specification (p. 21; Table 3). We will assume for purposes of
22 deciding the appeal that the experimental study is based on actual
23 experimentation. The study, however, involves comparing Kawabata properties
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013