Appeal No. 2006-1952
Application No. 09/750,744
(col. 6, lines 53-56).
The appellants argue that Hamajima’s disclosure of an
apertured nonwoven fabric is insufficient for disclosing or
suggesting a hydroentangled, hydroapertured spun-lace material
(brief, page 7; reply brief, pages 2-3).
The examiner argues (answer, page 4):
With respect to the cover layer being hydroentangled
and hydroapertured: Hamajima discloses the topsheet being an
apertured nonwoven fabric (column 5, line 1), therefore
being apertured and entangled (due to the fabric being a
nonwoven web), the formation of the apertures and
entanglement are Product-by-Process limitations, and these
limitations are not limited to the manipulations of the
steps, only the structure implied by these steps (see
MPEP 2113). It follows that if the product in the claim
with the product-by-process limitation is the same as the
product of the prior art, the claim is unpatentable even
though the prior art was made by a different process.
Therefore, cover layer being entangled and apertured using a
hydro method or means, is anticipated in the Hamajima
reference.
The examiner is correct that if a claimed product made according
to a process-by-product limitation is the same as a prior art
product, the product-by-product limitation does not patentably
distinguish the claimed product over the prior art product.
However, the examiner has the initial burden of establishing a
prima facie case of unpatentability by providing evidence or
reasoning which indicates that the appellants= product and the
prior art product are identical or substantially identical. See
deficiency in Hamajima and Jackson as to the independent claims.
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