Appeal No. 2004-0651
Application No. 09/898,082
prior art products and make physical comparisons therewith. In
re Brown and Saffer, 450 F.2d 531, 173 USPQ 685 (CCPA 1972).
Where a product-by-process claim is rejected over a prior art
product that appears to be identical, although produced by a
different process, the burden is upon applicants to come forward
with evidence establishing an unobvious difference between the
claimed product and the prior art product. In re Marosi, 710
F.2d 799, 802, 218 USPQ 289, 292-93 (Fed. Cir. 1983).
Thus, the question comes down to whether appellant has met
his burden of proof in establishing that the product made by the
product-by-process claim 1 results in some discernible, or
unobvious, difference over the Kawai product. Arguments of
counsel cannot take the place of evidence. In re DeBlauwe, 736
F.2d 699, 222 USPQ 191 (Fed. Cir. 1984).
While counsel for appellant argues that the claimed dishing
portions result in unobvious differences and advantages over the
cited prior art, particularly in “higher reliability electrical
connection of the conductive regions” (principal brief-page 12)
and “stresses in the resulting final product” (principal brief-
page 12), the record does not reflect any objective evidence in
this regard. Appellant also argues that an “examination of the
final product will indicate whether the claimed dishing portions
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