Appeal No. 2006-2630 Page 7
Application No. 10/255,014
page 4, lines 2-6.)
Thus, the specification describes only that the sealing material is first
attached to the front side film by heat sealing to create a temporary seal and then
permanently attached by a second step of heat sealing. The examiner took the
position, which we find reasonable, that once heat is applied to the sealing material
to create a permanent heat seal, this heating will cause the previously-created
temporary heat seal to be subsumed by the permanent heat seal. We find that this
articulation of structure of the resulting product was a reasonable one in view of
the description in the specification and was sufficient to shift the burden to the
appellants to provide evidence showing that the resulting seal of the claimed
invention was in some way structurally different from the seal of Wild. The
appellants failed to provide any such showing. The appellants rely on the
dissenting opinion in Smithkline to argue that the process limitations of claim 1
should not be overlooked in determining anticipation. Reply, p. 2. The examiner,
however, did not overlook the process steps of claim 1. Rather, he considered
whether the application of these process steps would result in a product having a
structural difference from the prior art.
In response to the enablement rejection, which was later withdrawn by the
examiner, the appellants had argued that the temporary tack seal is structurally
discernable from the permanent seal because the seal volume is different or denser
where the temporary seal and final seal overlap. The appellants had argued that
this denser seal volume in the area of the temporary seal is visually discernable.
Brief, p. 4, 5. The appellants, in fact, had attempted to amend the specification and
Figure 3 to add a more detailed description of the two seal areas to show that the
temporary seal area is smaller than the permanent seal area, such that there is an
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