Appeal No. 96-2149
Application 08/135,207
(3) Claims 7-11 and 13-15 over Carey.
In addition, the examiner has finally rejected the appealed claims under 35 U.S.C.
§ 103 as follows:
(1) Claims 2, 3, 5 and 6 over Iwamura;
(2) Claim 12 over Carey.
We have carefully reviewed the respective positions advanced by appellants and
the examiner. In so doing, we will sustain the examiner's § 102 and § 103 rejections over
Iwamura for essentially those reasons expressed by the examiner. However, we will not
sustain the examiner's § 102 rejections over Walsh and Carey nor the examiner's § 103
rejection of claim 12 over Carey. Our reasoning follows.
We consider first the examiner's § 102 and § 103 rejections over Iwamura.
It is well settled that when a claimed process or product appears to be substantially the
same as a product or process disclosed by the prior art, the burden is on the applicant to
prove with objective evidence that the product and process of the prior art do not
necessarily or inherently possess characteristics attributed to the claimed product. In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best, 562 F.2d
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