Appeal 2007-3426
Application 10/400,954
as described by LaFollette. See, e.g., Thorpe, 777 F.2d at 697, 227 USPQ at
966; In re Best, 562 F.2d 1252, 1255-256,
195 USPQ 430, 433-34 (CCPA 1977);1 cf., e.g., In re Lindner, 457 F.2d
506, 508, 173 USPQ 356, 358 (CCPA 1972) (“This court has said . . . that
mere lawyers’ arguments unsupported by factual evidence are insufficient to
establish unexpected results.” (citations omitted)).
Similarly, with respect to claim 2, Appellants’ contention that an
electrolyte separator component approximately one millimeter thick cannot
be produced by photolithography is of no more persuasion. Indeed,
LaFollette describes the sequential layering of microbattery components
including electrolyte separators which can be accomplished by a number of
deposition processes that can be used with any manner of lithography
processed. Appellants do not submit persuasive argument and/or objective
evidence establishing that the layer deposition processes described by
LaFollette would not be expected by one of ordinary skill in this art to
provide said component in the specified thickness. See, e.g., Best, 562 F.2d
1 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 In re Ludtke, [441 F.2d 660, 169 USPQ 563 (CCPA 1971)].
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. [Footnote and citation
omitted.]
Best, 562 F.2d at 1255, 195 USPQ at 433-34.
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