Appeal No. 2001-2200
Application No. 09/286,328
re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1969) (recitation of
“interbonded one to another by interfusion between the surfaces of the perlite particles”
construed as structural limitation in product claim); In re Dike, 394 F.2d 584, 589, 157
USPQ 581, 585 (CCPA 1968) (no error in USPTO board holding that term “blow-
molded” in claims drawn to integral plastic container and handle failed to distinguish
over prior art, because term related to process of making the article, and was not
definitive as to the structure of the article).
As described at column 3, lines 42 through 64 of the '917 patent, the prior art
structure consisted of a piezoelectric substrate 11, Al-Cu alloy films 12, 14, a tantalum
(Ta) film 13, and Al-Ta alloy films 15, 16. According to the teachings of the '917 patent,
however, the steps of laminating an aluminum-copper alloy film and a copper film, and
heating the laminated structure, as recited in independent claims 34 and 43, yield a
product having a copper film layer.
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). Since the structure shown in Figure 1 of the '917 patent does not contain a
copper film layer which results from appellants' claimed process steps, and the
examiner has not provided a convincing rationale as to why the prior art structure is
deemed to be the same as the claimed product, we conclude that applicants have no
burden to show that the claimed product is different from the prior art product. We do
not sustain the section 102 rejection of claims 34-36 and 43.
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