Appeal No. 96-1207
Application No. 08/064,203
when the prior art discloses a product which reasonably
appears to be either identical with or only slightly
different than a product claimed in a product-by-
process claim, a rejection based alternatively on
either section 102 or section 103 of the statute is
eminently fair and acceptable.
Inasmuch as all of the product limitations are disclosed
by the applied prior art, the examiner has established a prima
facie case of unpatentability of the claimed invention.
Notwithstanding the prima facie case of unpatentability,
the appellant can come forward with evidence establishing an
unobvious difference between the claimed product produced by
the process recited supra and the prior art product produced
by a conventional process. In re Marosi, 710 F.2d 799, 803,
218 USPQ 289, 292-93 (Fed. Cir. 1983).
The evidence submitted by appellant is three declarations
attached to the brief as Exhibit A through C. The three
declarations are executed by William H. Owen, Vice President,
Product Planning and Intellectual Properties, Xicor, Inc., the
assignee of the subject patent application. The three
declarations make clear that the unobvious differences between
the claimed process and the conventional processes are
discussed throughout the specification. In the Exhibit A
declaration, for example, paragraph 10 discusses the portion
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