Appeal 2007-1680
Application 10/081,087
applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. . . .
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. [Citation omitted;
emphasis added.]
See also In re Spada, 911 F.2d 705, 708, 15 USPQ 2d 1655, 1658 (Fed. Cir.
1990); In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Here, consistent with the principle taught in Best, the Examiner has
correctly found that the products and/or processes described in Hayashi and
Kato appear to be identical or virtually identical to those claimed and
described in the instant application. Hayashi and Kato indeed teach a positive
electrode material comprising nickel hydroxide powder which is spherical in
shape with an average particle size of 10 µm (Hayashi, col. 4, ll. 50-52 and
Kato, col. 11, ll. 56-60). According to Kato, the spherical particles having an
average particle diameter of 10 µm have the claimed BET specific surface
area (e.g., col. 5, ll. 3-5). Hayashi also teaches that uniform crystal growth
reduces the amount of disordered crystals which improves the conductivity of
nickel hydroxide, which implies that the resulting spherical particles are
highly circular (uniform circularity).
In addition to the virtual or identical identity between the claimed and
prior art products, both Hayashi and Kato teach processes substantially
identical to the claimed process as well. They employ the same overall basic
procedure as that claimed: nickel hydroxide is obtained by reacting an
aqueous nickel sulfate solution with an aqueous sodium hydroxide solution
under overlapping pH conditions. Kato’s example 1 also describes the
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