Appeal 2007-1098
Application 10/026,059
1 Specific to product claims, Best adds, 562 F.2d at 1255, 195 USPQ
2 at 433-34 (footnote omitted):
3 Where, as here, the claimed and prior art products are identical
4 or substantially identical, or are produced by identical or substantially
5 identical processes, the PTO can require an applicant to prove that the
6 prior art products do not necessarily or inherently possess the
7 characteristics of his claimed product. See In re Ludtke, supra.
8 Whether the rejection is based on “inherency” under 35 U.S.C. § 102,
9 on “prima facie obviousness” under 35 U.S.C. § 103, jointly or
10 alternatively, the burden of proof is the same, and its fairness is
11 evidenced by the PTO’s inability to manufacture products or to obtain
12 and compare prior art products. See In re Brown, 459 F.2d 531, . . .
13 173 USPQ 685 ([CCPA ]1972).
14 In this case, I find that the Examiner presented sufficient evidence in support
15 of the appealed patentability rejection to require Applicants to prove that Luce’s
16 potting material would not reduce any thermal drift associated with an electronic
17 component of an electronic watch Luce describes by increasing the thermal mass
18 of the electronic component. Applicants responded with argument unsupported by
19 objective evidence.
20 I would affirm the appealed final rejections of Claim 1. Furthermore, I
21 would affirm the final rejections of all claims said to stand or fall with Claim 1.
22
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