Appeal No. 2007-3827
Application 08/713,905
(Fed. Cir. 1988) (“Obviousness does not require absolute predictability of
success. . . . For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted).
We recognize that the applied references do not specifically address
the matter of hydrolyzable chlorine but do teach control of carbamic acid
chloride. However, one of ordinary skill in this art would have reasonably
expected that the claimed processes produce identical or substantially
identical products to that of the combined teachings of the applied references
even though the references are silent with respect to ppm of hydrolyzable
chlorine, thus shifting the burden to Appellants to patentably distinguish the
claimed process encompassed by appealed claim 1 over the applied prior art
even though the ground of rejection is under § 103(a). Indeed, this is the
case here as appealed claim 1 does not correlate any process step with the
range of hydrolyzable chlorine in ppm, and the references teach recovery
and further workup of the isocyanate product, including control of carbamic
acid chloride. See, e.g., In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430,
433-34 (CCPA 1977);7 In re Skoner,
7 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
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