Appeal No. 1996-1699
Application No. 08/077,681
product-by-process claims because of their peculiar nature
than when a product is claimed in the conventional fashion.
In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA
1974). However, in order to shift the burden of coming
forward with evidence to the applicant to establish an
unobvious difference between the claimed product
and the prior art product, the examiner must provide a
rationale tending to show that, although produced by a
different process, the claimed product appears to be the same
or similar to that of the prior art. In re Marosi, 710 F.2d
798, 802, 218 USPQ 289,
292 (Fed. Cir. 1983). In this case, no such rationale has
been set forth by the examiner. Therefore, the burden of
proof has not been shifted to the appellants. Furthermore, we
are informed by appellants’ specification that inserts
subjected to the claimed method have carbine grains which are
“almost undamaged and very few cobalt areas remained” as
compared to an insert produced according to the prior art
method (specification, page 5). Having no reason to doubt the
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