Appeal 2007-2463
Application 10/403,555
We will not sustain the Examiner’s rejection of dependent claims 5
and 10. At the outset, we note with respect to claim 5 that the term “shrunk”
merely recites a product-by-process limitation which, absent evidence to the
contrary, does not further limit the resulting apparatus structure.3
Nevertheless, the claim calls for shrinking the securing ring onto the end
plate – the same end plate that was recited in claim 2. Although we agree
with the Examiner to the extent that this end plate can be considered as a
separate portion (i.e., the flattened portion) of the unitary structure shown in
Figure 2 of Kojima, we fail to see how the securing ring 21a -- also a part of
the same unitary structure -- can be shrunk onto this unitary “end plate,” let
alone fix the bandage edge therebetween.
To be sure, Zigler does teach heat-shrinking the outer steel shell 16
around the core 12 and surrounding magnets 22 (Zigler, col. 5, ll. 31-34; Fig.
2). Applying this teaching to Kojima, however, would still not result in the
structure recited in claim 5. Although Zigler’s shell 16 is crimped inwardly
over the outer edges of end plate 14 in Figure 10 as the Examiner indicates
(Answer 8), Zigler’s shell is analogous to Kojima’s “bandage” 4. Compare
Figure 2 of Zigler with Figure 1 of Kojima. Applying Zigler’s teaching in
Figure 10 to Kojima would, at a minimum, necessitate crimping the edge of
3 Reciting how a product is made does not further limit the structure of the
product itself. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.
Cir. 1985) (citations omitted). We therefore presume that such structures do
not patentably distinguish over otherwise identical structures absent
evidence to the contrary. See In re Marosi, 710 F.2d 799, 803, 218 USPQ
289, 292-93 (Fed. Cir. 1983) ("Where a product-by-process claim is rejected
over a prior art product that appears to be identical, although produced by a
different process, the burden is upon the applicants to come forward with
evidence establishing an unobvious difference between the claimed product
and the prior art product.").
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