Appeal 2007-1925
Application 09/391,869
possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433-34 (CCPA 1977) ("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 also In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655,
1657-58 (Fed. Cir. 1990).
Analysis of Anticipation Issue
Appellant argues that Michlin does not disclose that the pocket insert of the
invention has “a thickness rendering the insert passable through a copier or printer
in sequence with a sheet of paper” (Substitute Br. 6-8). Appellant asserts that the
teaching of Michlin that “the back surface of the back ply can be preprinted with
reply address information and postal indicia so as to be conveniently mailed,”
(Finding of Fact 5), “does not equate to a disclosure or a suggestion that the pocket
insert itself and as a whole is of a thickness passable through a printer or copier in
sequence with a sheet of paper having the same size as the base sheet.” (Substitute
Br. 6) (emphasis in original).
The Examiner found that “if the pocket sheet and base can be one ply,
wherein the pocket sheet is folded and attached to the base sheet to form the insert
(as stated in Col. 2, lines 40-46), then the insert is capable of being passed through
a printer as a whole.” (Answer 4). There is nothing in the Specification to indicate
that the thickness necessary to render the insert passable through a copier or printer
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