Appeal No. 2000-0822
Application 09/037,555
coated layer that is buried in the recessed portions in the surface of the core” (col. 3, lines 1-4),
with the result shown in FIG. 1, pointed to by the examiner.
We further find that Kawata states with respect to the process, that
the magnetic core particles are coated with a resin compositions which chiefly contains
a thermosetting resin and a small amount of a low-melting thermoplastic resin or wax.
At the time when the thermosetting resin cures, therefore, the low-melting
thermoplastic resin or wax weakens the cohesive force of the thermosetting resin or
improves fluidity thereof, enabling the recessed portions to be smoothly filled with the
resin and the portions other than the recessed portions to be smoothly coated with the
partial coating layer. [Col. 2, lines 58-67; see also col. 3, lines 50, to col. 4, line 7.]
Kawata further teaches that “a solution or dispersion of the resin composition . . . is applied to
the magnetic core particles to form a coating layer of the resin composition on the surface of the
magnetic core particles,” which can be accomplished by a number of methods, and then heated
(col. 8, lines 23-67). In Kawata Example 1, after the composition was coated, the “solvent was
dried, and the mixture was heat-treated” (col. 9, lines 15-16).
We further find that while Kawata uses the term “recessed” to describe the area shown as
“recessed portions 4” in Kawata FIG. 1, one of ordinary skill in this art would have recognized
that a structure of this type can also be termed a “pore” as that term is customarily defined. See,
e.g., “pore . . . 2. A minute surface opening or passageway.” The American Heritage Dictionary,
Second College Edition, page 965 (Boston, Houghton Mifflin Company, 1982).
Accordingly, based on this substantial evidence, we agree with the examiner that, prima
facie, it reasonably appears that that the carrier core product prepared by, inter alia, Kawata
Example 1, is identical to the claimed product encompassed by each of appealed claims 1, 49 and
53, even though prepared by a different process. See generally, Spada, 911 F.2d at 708-09, 15
USPQ2d at 1657-58. Accordingly, the burden falls upon appellants to establish by effective
argument or objective evidence that the claimed invention patentably distinguishes over Kawata.
See, e.g., Spada, supra; In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA
1977)(“Where, as here, the claimed and prior art products are identical or substantially identical,
or are produced by identical or substantially identical processes, the PTO can require an applicant
to prove that the prior art products do not necessarily or inherently possess the characteristics of
his claimed product. See In re Ludtke, [441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. Whether
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