Appeal No. 2000-1103
Application No. 08/576,367
II.
We must note that claims 31 and 32 on appeal are written in product-by-process
format. Therefore, the Examiner has a lesser burden of proof with a rejection under section
102 or section 103 indicated where the prior art reasonably appears to disclose a product that
is identical with or only slightly different than the product claimed. See In re Fitzgerald,
619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Fessman, 489 F.2d 742, 744, 180
USPQ 324, 326 (CCPA 1974). Once the Examiner meets this lesser burden of proof, the
burden shifts to Appellants to show that the claimed product materially differs from the
product of the prior art. It is the product that must be gauged in light of the prior art, not the
process limitations. See In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103 (CCPA
1976); In re Fessman, supra.
The product of claim 31 is a plastic or sintered material element having a
microstructure complementary to the microstructured mold. As stated above, the Examiner
has found that Wuensch discloses a process for the production of microstructures from a
microstructured mold having an open cavity on one surface. The Examiner acknowledges
the claimed process differs from the of process of Wuensch because of the material from
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