Appeal No. 99-2487
Application No. 08/834,051
and claims 5 and 6 stand correspondingly rejected over these
references and further in view of Mehta.
We cannot sustain any of the above noted rejections.
Concerning the section 102/section 103 rejection of product-
by-process claims 9-11 over Mehta, the examiner expresses his
position in the following manner on page 3 of the answer:
Mehta teaches in col. 4 lines 25-40 rice straw to make
active carbon. While not teaching the claimed process
of making, any difference would have been obvious to
one of ordinary skill in the art at the time of the
invention because where the examiner has found
substantially the same product as claimed in the art,
the burden is upon the applicant to show a difference
in the product, not on the examiner to show the same
process; In re Brown 173 USPQ 685 and In re Marosi 218
USPQ 289.
Contrary to the examiner’s above quoted statement, Mehta
does not teach “in col. 4 lines 25-40 rice straw to make active
carbon.” As correctly indicated by the appellants in their
brief, Mehta discloses a process of making silica from organic
materials such as rice hulls or rice straw. While it is true
that this product contains a small amount of residual carbon,
nowhere does patentee teach that this carbon is in an activated
form as required by the rejected claims. Moreover, although the
examiner makes the unembellished statement that “Mehta treats the
same feed in essentially the same manner as appellants and thus
appears to make the same product” (answer, page 4), the examiner
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