Appeal No. 1998-1595
Application No. 08/439,912
We agree with the examiner. Moreover, we find that the examiner has not been
unreasonable in his definition of the term “monolithic” and that the definition generally
correlates with that set forth in the specification as originally filed and as amended. Here,
we note that the implied limitation of the product by the single step process of manufacture
does not limit/distinguish the invention claimed in claim 21. Furthermore, we note that the
language of claim 21 does not recite that the same material is used throughout the
structure, but appellants rely upon the process step to limit the product. Therefore, this
argument is not persuasive, and we sustain the rejection of claim 21.
With respect to claims 15-19, the citations provided by appellants clearly maintain
that the process will not distinguish the product unless appellants provide evidence to
support a difference in the product which cannot be claimed otherwise, due to the nature of
the product. Here, there appears to be other options or alternatives for appellants to
distinguish their product, and the burden has shifted to appellants since the examiner has
set forth a prima facie case of obviousness. Appellants may either amend the claims or
provide evidence that the claimed product by process is not the same as that in the prior
art. Appellants have done neither, therefore, we will sustain the rejection of claims 15-19.
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