Appeal No. 2001-2406
Application 09/307,445
We will not sustain the examiner’s rejection of claims 1-
5 based on this record. In considering the claimed phrase “a
conductive metal sleeve that is shrink-fitted onto said ceramic
tube,” the examiner erred in treating the phrase as a product by
process limitation, and therefore, ignoring the shrinking-fitted
aspect of the recitation. The application of product by process
considerations to a claimed product requires that the structure
of the claimed product be essentially the same as the structure
of the applied prior art. When this finding is supported by the
evidence, it shifts the burden to an applicant to demonstrate
that the claimed structure is, in fact, different from the
applied prior art in its structural properties. We disagree with
the examiner’s assertion that the claimed sleeve that is shrink-
fitted onto the ceramic tube is essentially the same structure as
the conductive metal sleeve of Kadowaki. We agree instead with
appellant’s argument that a shrink-fitted connection between two
elements describes a structural arrangement rather than a process
arrangement. Although the phrase “shrink-fitted” may describe
how the two elements came to be connected together, the phrase
also describes a structural relationship between the two elements
which cannot be ignored in considering the obviousness of the
claimed invention. Since we find that the claimed phrase quoted
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