Appeal No. 1996-3472
Application 08/192,088
Cottringer et al. (Cottringer) 4,623,364 Nov. 18,
1986
Claims 1-5 and 7 stand rejected under 35 U.S.C. § 102(b)
as anticipated by, or in the alternative, under 35 U.S.C. §
103 as unpatentable over Clark (Answer, page 3). We reverse
these rejections by the examiner for reasons which follow.
OPINION
It is the examiner’s position “that the burden is upon
appellant [sic] to show by way of tangible evidence that the
claimed abrasive tool does in fact have different properties
.” (Answer, sentence bridging pages 3-4). However, it is well
settled that the examiner bears the initial burden of
presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
The examiner has considered the claimed limitation “sol-
gel” to be a process limitation which does not further limit
the claimed product (Answer, page 4). Appellants argue that
“sol-gel alumina abrasive grains” are described in the
specification (page 6, lines 1-15) and are not a process
limitation but a physically different grain than traditional
3
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