Appeal No. 95-0996
Application 07/943,025
‘410, for the reasons stated above. A lesser burden of proof
is needed to make out a prima facie case of obviousness in
product-by-process claims than in conventional product claims.
See In re Fessman, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA
1974). Once it is shown that the claimed product reasonably
appears to be the same or substantially similar to the product
of the prior art, the burden shifts to appellants to
establish, through objective evidence, an unobvious difference
between the claimed and prior art product. See In re Best,
562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977); Ex
parte Phillips, 28 USPQ2d 1302, 1303 (Bd. Pat. App. & Int.
1993).
The Kersting Declaration dated Dec. 6, 1993, has been
considered. However, in view of the new ground of rejection,
this comparison is not with the closest prior art. See In re
Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991). Accordingly, we find that appellants have
not presented objective evidence, on this record, which would
serve to rebut the prima facie case of obviousness established
by Tachikawa II or EP ‘410.
C. Summary
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007