Appeal 2007-1373
Application 10/651,687
than about 500 denier (col. 2, ll. 45-48; col. 7, ll. 57-58; and col. 8,
ll. 31-35).
“Appellants have chosen to describe their invention in terms of certain
physical characteristics of the roughened substrate surface.” Merely
choosing to describe their invention in terms of variables not present in the
prior art does not render the claimed subject matter patentable. In re Skoner,
517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975). “Where, as here, the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, 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. [Citation
omitted]. 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 PTO’s inability to manufacture products or to obtain and compare
prior art products.” In re Best, 562 F.2d 1252, 1255-56, 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). The Examiner’s analysis supporting
obviousness should be made explicit and should “identify a reason that
would have prompted a person of ordinary skill in the art to combine the
elements” in the manner claimed. KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct.
1727, 1731, 82 USPQ2d 1385, 1389 (2007). Discovery of the optimum
value of a result-effective variable is ordinarily within the skill in the art.
See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); and
In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
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