Appeal 2007-1943
Application 10/443,649
same process steps defined by Appellants’ claims. Accordingly, Appellant
had the burden of proof to overcome the Examiner’s inherency rejection.
We have considered all the evidence relied upon by the Examiner in
support of inherency and all the evidence and arguments to the contrary to
which Appellants point. We find that the Examiner’s case for inherency is
based on a preponderance of the evidence and quite reasonable. We find
Appellants’ repetitive arguments to the contrary somewhat shy of supporting
evidence. More specifically, Appellants had the burden to prove that the
Examiner’s inherency rejection was either wrong or unreasonable.
Appellants did neither.
Best promulgates the rules that: (1) a composition and all its
properties are one; and (2) newly discovered properties do not make an old
composition new. The Court in Best recognized, as it did earlier in In re
Brown, 459 F.2d 531, 1041, 173 USPQ 685, 688 (CCPA 1972)(“As a
practical matter, the Patent Office is not equipped to manufacture products
by the myriad of processes put before it and then obtain prior art products
and make physical comparisons.”), when it said, In re Best, 562 F.2d at
1255, 195 USPQ at 433-34 (footnote omitted):
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.
A patent should not be granted when the differences between the
subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which subject matter
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