Appeal No. 2007-1487
Application 09/562,632
reference may be bodily incorporated into the structure of the primary
reference . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
The method set forth in product-by-process claim 8 does not, of
course, patentably distinguish the claimed composition unless the recited
method is established by Appellants to provide a product that is nonobvious
over the applied references. See, e.g., Thorpe, 777 F.2d at 697, 227 USPQ at
966; In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA
1977). Here, Appellants have not addressed the Examiner’s contention that
one of ordinary skill in this art, familiar with two-part polyurethane coatings
and the reactivity of the components thereof, including an epoxy functional
silane coupling component, would have added the latter component to the
other components in an advantageous manner in routinely following the
combined teachings of Kubitza and Morikawa. Thus, on this record, the
claimed compositions of claim 8 are identical or substantially identical to the
compositions prepared by identical or substantially identical processes
following the combined teachings of Kubitza and Morikawa. See, e.g., Best,
562 F.2d at 1255-56, 195 USPQ at 433-34.1
1 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.
See In re Ludtke, [441 F.2d 660, 169 USPQ 563 (CCPA 1971)].
Whether the rejection is based on “inherency” under 35 USC
102, on “prima facie obviousness” under 35 USC 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
12
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