Appeal No. 2003-0413
Application 09/148,262
Claims 10-14 recite the specific method by which
the plastic article is made. However, when the prior
art of [sic] discloses a product which reasonably
appears to be either identical with or only slightly
different than a product claimed in a product-by-
process claim, the burden is on the applicant to
present evidence from which the examiner could
reasonably conclude that the claimed product differs in
kind from those of the prior art.
All of the appellant’s claims are product-by-process claims.
The examiner has the initial burden of establishing a prima facie
case of unpatentability by providing evidence or reasoning which
indicates that the appellant’s product and that of the prior art
are identical or substantially identical. See In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985); In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
The examiner has not provided the required evidence or
reasoning which indicates that the appellant’s product and that
of the prior art are identical or substantially identical.
Specifically, the examiner has not provided evidence or reasoning
which shows that Niederst’s article has an “enhanced surface” as
that term is used by the appellant. The appellant argues that an
enhanced surface finish is not a quality taught by Niederst
(brief, page 5). The examiner’s response is that the enhanced
surface “limitation does not add anything materially, or
patentably distinguish the surface of the presently claimed
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