Appeal No. 1999-2029 Page 12
Application No. 08/431,360
though the prior product was made by a different process.).
See also Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d
834, 8443-47, 23 USPQ2d 1481, 1488-91 (Fed. Cir. 1992). Once
the appellants have been provided with a rationale tending to
show that the claimed product appears to be the same or
similar to that of the prior art, although produced by a
different process, the burden shifts to the appellants to come
forward with evidence establishing an unobvious difference
between the claimed product and the prior art product. See In
re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93 (Fed. Cir.
1983). The appellants have not come forward with any evidence
to satisfy that burden. Compare In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-34 (CCPA 1977); In re Ludtke, 441 F.2d
660, 664, 169 USPQ 563, 566-67 (CCPA 1971).
In addition, the appellants assert that there is
additional evidence supporting patentability in that in the
specification they identified a problem and solved this
problem by their invention. We find this argument
unpersuasive since the problem identified by the appellants
(e.g., detachment of fibers from the coil) was solved by
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