Appeal 2007-2136
Application 10/457,769
and Fitzgerald concern product claims. However, the limitations at issue are
product limitations that Appellants argue are “in essence a limitation in part
on the relative concentrations of the polymerizations reagents” (Br. 8). As
stated in Fessmann, “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 therewith.” 489 F.2d at 744, 180
USPQ at 325 (quoting In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972)).
In the present case, the Patent Office is not equipped to manufacture
the products made by the methods described in Winslow to determine
whether these products have the properties recited in claim 28. Thus, we
agree with the Examiner that it is appropriate to shift the burden to
Appellants to demonstrate that Winslow does not teach the method of
claim 28. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433-434 (CCPA 1977).
We also agree with the Examiner that Appellants have not met this
burden. As discussed above, Appellants argue that that the “formation of
polymer resins with [the] combination of properties [recited in claim 28] is
not a necessary outcome of the processes taught by Winslow” (Br. 7). In
particular, Appellants state that the “processes of Winslow et al. may
produce a polymer resin with a density lower than 0.92, because as pointed
out by the Examiner ‘density of the ethylene polymer is based on the
ethylene/hexene ratio’” (id.). However, Winslow’s Examples 3 and 4
9
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