Appeal 2006-2778
Application 10/780,021
(citations omitted).2 But we also must consider structure implied by the
recited process steps, especially where the (1) the product can only be
defined by the process steps by which the product is made, or (2) the process
steps would be expected to impart distinctive structural characteristics to the
final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221,
223 (CCPA 1969); see also MPEP § 2113 (8th ed., rev. 5, Aug. 2006). The
burden, however, is on Appellants to provide evidence establishing an
unobvious difference between the claimed product and the prior art product.
See In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93 (Fed. Cir.
1983).
Although Appellants assert that the cited prior art does not disclose
electrostatically depositing the swelling layer, Appellants have provided no
evidence on this record to show that (1) the product can only be defined by
the process steps by which the product is made, or (2) the process steps
would be expected to impart distinctive structural characteristics to the final
product.
Turning to the prior art, Asai states that the composition has a suitable
thickness such that it can be coated on various cable component materials by
a variety of common coating methods (Asai, col. 8, ll. 21-29). Although
Asai does not specifically mention electrostatic deposition, we find no
2 See also SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317,
78 USPQ2d 1097, 1100 (Fed. Cir. 2006) ("Regardless of how broadly or
narrowly one construes a product-by-process claim, it is clear that such
claims are always to a product, not a process. It has long been established
that one cannot avoid anticipation by an earlier product disclosure by
claiming the same product more narrowly, that is, by claiming the product as
produced by a particular process.").
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