Appeal No. 2004-0651
Application No. 09/898,082
were used in making the product” (principal brief-page 12).
Specifically, counsel for appellant points out that
In the final product, peripheral and central parts of
solid state bonded dishing portions are different in
strain and texture due to the difference between
deformation rates of the central and peripheral parts
of the dishing portions. In the final product, the
strain is concentrated in the peripheral parts of the
bonded dishing portions, and thus the peripheral parts
of the dishing portions are more strongly bonded. This
clearly represents an unexpected and unobvious
difference with respect to the prior art (principal
brief-pages 12 and 13).
While a showing of these argued differences may be
sufficient to overcome the examiner’s rejection of product-by-
process claim 1, appellant has offered no objective evidence
enabling us to make an independent evaluation as to the resulting
stronger bond, or difference in strain and texture. Since
arguments of counsel cannot take the place of evidence, and, in
our view, the examiner has made a reasonable showing that the
product of instant claim 1 is reasonably identical to the Kawai
product, we will sustain the rejection of claim 1 under 35 U.S.C.
§ 102(b). In accordance with appellant’s grouping of claims, at
page 1 of the reply brief, claims 3, 4, 7 and 9 will fall with
claim 1.
-7-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007