Appeal 2006-2601
Application 10/364,286
We consider first the Examiner's § 102 rejection of claims 1-4 over
Sumiya. We concur with the Examiner that the claimed synthetic gem that
comprises elements recovered from human remains is described within the
meaning of § 102 by Sumiya. Both the claimed synthetic gem and the
synthetic diamond of Sumiya comprise elemental carbon and, as explained
by the Examiner, there is no distinction whatsoever in elemental carbon
recovered from human remains or derived from any other source. Simply
put, carbon is carbon. While Appellant maintains that the principles for
examining product-by-process claims do not apply to appealed claims 1-4
because they are not product-by-process claims, we do not agree. The claim
recitation "recovered from human remains" is a process step which defines
how the elements of the synthetic gem are derived. In any event, even if
claims 1-4 on appeal are not classical product-by-process claims, it is well
settled that when a claimed product reasonably appears to be substantially
the same as a product disclosed by the prior art, the burden is on the
Applicant to prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed product. In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980). In the
present case, it is incumbent upon Appellant to establish that there is, in fact,
some difference in composition or structure between gems within the scope
of claims 1-4 and gems reasonably described by Sumiya. However, as
3
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007