Appeal No. 97-3246
Application 08/384,090
describe this characteristic in terms of physical structure
but, if so, it would appear from Hughes that the burden was on
the Patent and Trademark Office to indicate where or how
appellants’ invention is, or may be, so described. We find
that the examiner has not met this burden.
While the examiner cites Hughes and contends that the
claimed “anodically bonded” limitation is a process limitation
not permitted “under the Hughes rule” [answer-page 6], we find
just the opposite. In our view, Hughes supports appellants’
position [principal brief-page 7] that since there is no other
way to claim the product to accurately describe the feature
which distinguishes the product from the prior product,
“anodically bonded” must be given patentable weight.
In responding to appellants’ argument, the examiner
spends two pages [answer-pages 4-5] discussing U.S. Patent No.
5,438,343, referred to in the instant specification and
incorporated by reference therein. We are at a loss to
understand what bearing this patent has on the instant
rejection under 35 U.S.C. § 102(b). First, this patent forms
no part of the examiner’s rejection. Second, it is doubtful
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