Appeal No. 1998-2425 Page 7
Application No. 08/656,871
We do not agree with the examiner’s position (answer,
page 3) that: "[t]he core-shell polymers of [the] claims are
generic to those disclosed by [the] references and would
possess similar properties." We recognize that the examiner
bears a lesser burden of proof to establish a prima facie case
of obviousness for product-by-process claims. However, we 1
determine, for reasons noted above, that the examiner’s broad
conclusionary statements simply do not establish that the
cited prior art discloses a product that can reasonably be
said to be either identical with or only slightly different
than the product of the appealed product-by-process claims.
See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980).
For the foregoing reasons, we find that the examiner has
not established a prima facie case of obviousness on this
record.
CONCLUSION
1In re Fessman, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA
1974).
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