Appeal No. 2006-2630 Page 6
Application No. 10/255,014
novelty can only be captured by obtaining a process claim.” Smithkline, 439 F.3d
at 1319, 78 USPQ2d at 1102.
The appellants argue that the structure of the Wild pouch with only one
permanent seal is distinguishable from the structure of the claimed invention
having a temporary seal applied around the periphery of the straw hole and a
permanent seal applied over the temporary seal. Brief, pp. 10, 11. The appellants,
however, fail to provide any showing or explanation of a structural difference.
Rather, the appellants argue that they are not required to explicitly include
evidence in response to an anticipation rejection in the specification in order to be
considered.
We disagree. We find that the examiner presented a prima facie case of
unpatentability by his articulation of how each and every structural feature of claim
1 is found in Wild. In the case of a product-by-process claim, if the examiner
demonstrates from the evidence that the structure of the resulting product is
disclosed in the prior art, then the burden shifts to the applicant to demonstrate how
the structure of the invention differs from the prior art to make that structure
patentable. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
We note that there is scant description in the specification as to the application of
the temporary and permanent seals, and thus it is difficult to discern the structure
of the resulting product. The specification discloses only:
[A] periphery of the temporally punched section 13 is
temporally heat-sealed by a temporally heat-sealing
device 7. Then the front side film 4 and a rear side film 5
are aligned with each other by pinch rollers 14, 14a, and
the section of the straw hole sealing material temporally
sealed by the temporally sealing machine 7 is finally
sealed by a finally sealing machine 11. (Specification,
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