Appeal 2007-2862
Application 10/955,533
In our view, however, the Examiner set forth a reasonable basis to
conclude that at least some of the polyethylene oxide would be retained by
the fibers in Kato’s final product. (Answer 7-8). See In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (Where the claimed and prior
art products are identical or substantially identical in structure or
composition, or are produced by identical or substantially identical
processes, a prima facie case of either anticipation or obviousness has been
established.); In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990) (“When the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”). Thus, the burden was properly
shifted to Appellant to establish that a non-woven sheet produced by
addition of polyethylene oxide as a dispersing agent would not result in “a
non-woven fibrous sheet containing . . . a friction reduction compound” as
claimed. See In re Best, 562 F.2d at 1255, 195 USPQ at 433 (The prima
facie case can be rebutted by evidence showing that the prior art products do
not necessarily possess the characteristics of the claimed product.). See also,
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773,
779 (Fed. Cir. 1985). Appellant has not provided the requisite evidentiary
showing to meet this burden. Cf. In re Geisler, 116 F.3d 1465, 1471, 43
USPQ2d 1362, 1365 (Fed. Cir. 1997) (argument by counsel cannot take the
place of evidence).
Claims 18, 19, and 20 set forth specific amounts of friction reduction
compound in the claimed product. (Br. 4). According to Appellant, these
amounts are necessary for the product to be effective, but are not taught or
suggested by the prior art. (Br. 4). Appellant has not, however, directed us
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