Appeal 2007-1817
Application 10/045,510
within the purview of an ordinary artisan.” (Answer 8.) “A person of
ordinary skill is also a person of ordinary creativity, not an automaton.” KSR
Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1397
(2007).
In In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA
1977) (footnote omitted) the court stated:
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. . . . 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.
Given the facts in this case, in order to overcome the Examiner’s
prima facie case of obviousness, Appellants were required to show their
product would not have been obvious in view of Jerussi’s teachings by
coming forward with evidence of unexpected results. This they have not
done. Thus, we agree with the Examiner that claims 95-98 would have been
prima facie obvious.
CONCLUSION
The obviousness rejection under § 103(a) of claims 1, 2, and 95-98
over Jerussi is affirmed.
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