Appeal No. 95-0785
Application 07/748,708
B. The Rejection Under §§ 102(b)/103
Claims 18 and 20 are written in product-by-process form. It
is well settled that the PTO bears a lesser burden of proof in
making a case of prima facie obviousness for product-by-process
claims because of their peculiar nature than when a product is
claimed in the conventional fashion. See In re Fessman, 489 F.2d
742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner
provides a rationale tending to show that the claimed product
appears to be the same or slightly different than that of the
prior art, although produced by a different process, the burden
shifts to applicant to come forward with evidence establishing an
unobvious difference between the claimed product and the prior
art product. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977).
Both claims 18 and 20 require the metal mat fibers to melt.
The examiner has not pointed out where this feature of the
claimed article can be found in the Gaughan or Komito references
(answer, pages 4 and 6). In fact, Komito teaches use of molding
temperatures below that at which the metal alloy melts or
“dissolves” (page 7). Gaughan teaches that the aluminum whiskers
are molten when they are produced (column 3, lines 16-20), but
fails to disclose that the metal is melted during thermoforming
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