Appeal No. 2003-1951 Page 3
Application No. 09/930,258
by said baking, we agree with the Examiner that this limitation does not, on its face, indicate a
patentable difference between the product of Varasparad and the claimed product (Answer, p. 3).
Appellants’ response is two pronged. First Appellants argue that, because an unbaked
film cannot teach a baked film, Varaprasad does not teach every limitation of the claimed
invention (Brief, p. 4). Second, Appellants argue that there are structural differences between
the claimed glass plate and the glass plate of Varaprasad (Brief, pp. 4-5).
The claims are directed to a glass plate product. While, as pointed out by Appellants
(Brief, p. 3), it is true that “[a] prior art reference must disclose every limitation of the claimed
invention, either explicitly or inherently, to anticipate,” In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997), “it is the patentability of the product claimed and not
of the recited process steps which must be established.” In re Brown, 459 F.2d 531, 535, 173
USPQ 685, 688 (CCPA 1972). Moreover, “when the prior art 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, a rejection ... is eminently fair and acceptable.” In re Fitzgerald,
619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980). Brown, 459 F.2d at 535, 173 USPQ at 688.
The burden is then upon the applicants to come forward with evidence establishing that the
process difference claimed does, in fact, result in an patentable difference between the claimed
product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93 (Fed.
Cir. 1983).
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