Ex Parte Saito et al - Page 10



                 Appeal 2007-2863                                                                                      
                 Application 10/934,507                                                                                
            1           In the Advisory Action of 10 July 2006, the Examiner explicitly                                
            2    brought up the point concerning the difference in unsaturation.                                       
            3           For whatever reason, there is no comment in the Appeal Brief                                   
            4    whatsoever concerning the Examiner's unsaturation observation.  We have to                            
            5    assume on this record that there is no answer.                                                        
            6                                                                                                          
            7           E.  Principles of law                                                                          
            8           Where, as here, the claimed and prior art products are identical or                            
            9    substantially identical, or are produced by identical or substantially identical                      
           10    processes, the PTO can require an applicant to prove that the prior art                               
           11    products do not necessarily or inherently possess the characteristics of his                          
           12    claimed product.  In addition to In re Fitzgerald, cited by the Examiner, we                          
           13    also call attention to (1) In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,                             
           14    433 (CCPA 1977) and (2) In re Spada, 911 F.2d 705, 709, 15 USPQ2d                                     
           15    1655, 1658 (Fed. Cir. 1990).                                                                          
           16                                                                                                          
           17           F.  Discussion                                                                                 
           18           Asahi Glass has not singled out any claim for particular consideration.                        
           19    Accordingly, claims 1-16 stand or fall together.  We have focused on claim 1                          
           20    and decide the appeal on the basis of claim 1.  37 C.F.R. § 41.67(c)(1)(vii)                          
           21    (2006).                                                                                               
           22           The Examiner has shown that Saito Example 1 uses materials falling                             
           23    within the scope of the claim 1.  The Examiner then goes on to say that it is                         
           24    not apparent that there is any difference between the product of Saito                                
           25    Example 1 and the subject matter of claim 1.  We perceive no error in the                             


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