Appeal No. 1997-3524 Page 12
Application No. 08/336,402
have not shouldered the shifted burden of furnishing evidence to
establish that the prior art product does not inherently or
necessarily possess the product characteristics of the claim 1
product. In this regard, we note that appellants’ references to
the preferred embodiments of the specification in the reply brief
in an attempt to establish a structural distinction for the
product of claim 1 are misplaced since claim 1 is not so limited.
See In re Self, 671 F.2d 1344, 1350-1351, 213 USPQ 1, 7 (CCPA
1982) (when the claim does not recite allegedly distinguishable
features, “appellant[s] cannot rely on them to establish
patentability.”). Nor have appellants furnished separate
arguments for the patentability of product claim 4, which depends
from claim 1. Consequently, on this record, we shall sustain the
examiner’s § 102 rejection of claims 1 and 4 as anticipated by
Pall.
With respect to the examiner’s § 102 rejection of claims 2
and 3 as anticipated by Pall, we agree with appellants (brief,
pages 19 and 20 and the reply brief) that the examiner has not
reasonably established that Pall necessarily describes a ceramic
porous member as required by claim 2 or a mean pore diameter on
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007