Appeal No. 1999-0203
Application No. 08/399,384
OPINION
We first note that the claims are written in two different
formats, only one of which has been discussed by the examiner
and appellant during the prosecution of this application.
Claims 8-10 and 12-16 are written in a product-by-process format
while
claims 17, 18 and 20 are written as process (of producing a film
structure) claims.
It is well settled that the examiner has a lesser burden of
proof necessary to establish a prima facie case of obviousness
in product-by-process claims since the Patent & Trademark Office
“is not equipped to manufacture products by the myriad of
processes
put before it and then obtain prior art products and make
physical comparisons therewith.” In re Fessman, 489 F.2d 742,
744, 180 USPQ 324, 325 (CCPA 1974), quoting from In re Brown,
459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). A rejection
under 35 U.S.C. § 103 is indicated where the prior art discloses
a product that appears to be either identical with or only
slightly different from
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007