Appeal 2007-1898
Application 10/360,622
exhibiting low specular reflectivity and having a dull appearance. Merely
choosing to describe their invention in this manner does not render
patentable their method which is clearly obvious in view of Baer et al.
[Citation omitted].” In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82
(CCPA 1975). Choosing to define an element functionally carries with it a
risk:
Where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on. In re Schreiber, 128 F.3d 1473, 1478,
44 USPQ2d 1429, 1432 (Fed. Cir. 1997), quoting In re Swinehart,
439 F.2d 210, 213, 169 USPQ 226, 229 (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 to obtain and compare prior art products. [Citation
and footnote omitted].” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977). When the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, such as the same
starting materials and process of making, the applicant has the burden of
showing that they are not. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has met the initial
burden of proof in establishing that the products of the prior art are identical
or substantially identical to the products claimed, and Appellants have not
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