Appeal 2007-2039
Application 10/619,656
FACTS, PRINCIPLES OF LAW, AND ANALYSIS
As held by the predecessor to our reviewing court in In re Best, 562
F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977):
Where….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 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.
See also In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1432
(Fed. Cir. 1997) (While there is nothing inherently wrong with using a
functional limitation, it does carry with it a risk; the burden is placed on the
applicant to prove that the prior art product does not necessarily possess the
claimed functional characteristic, when the claimed and prior art products
appear to be identical or substantially identical.)
Here, the Examiner has demonstrated that the tissue product taught by
Luu is either identical or substantially identical to the claimed product. Luu,
like the Appellants, teaches a tissue product “prepared according to
conventional processes (including TAD, CWP and variants thereof) known
to those skill in the art.” Compare Luu, col. 4, ll. 21-42, with the
Appellants’ Specification 3-6. In one embodiment of Luu’s invention, this
tissue product is provided in an embossed form (col. 3, ll. 33-37). Implicit
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