Appeal 2007-0911
Application 10/058,808
Hilmas based on the arguments made in the Brief. We answer that question
in the negative and affirm the Examiner’s anticipation and obviousness
rejections over Hilmas for substantially the reasons set forth in the Answer
and as further explained below.
Rejected claim 7 employs the open transitional term “comprising”,
which leaves the product claim open to the inclusion of other components
other than those specifically recited therein. Moreover, the product of
rejected claim 8 is described, at least in part, by a process of preparing same.
In assessing the patentability of such a product-by-process claim, the product
made is the focus of our inquiry, not the process itself. Where the prior art
product appears to be substantially the same as the claimed product as the
Examiner reasonably established here (Answer 4-7), the burden is on the
applicants to establish with objective evidence that the claimed product is
patentably distinct from the product of the prior art. See In re Brown, 459
F.2d at 535, 173 USPQ at 688. This burden has not been discharged by
Appellants’ arguments, as furnished in the Brief.
We are not persuaded by Appellants’ arguments because Appellants
have not established that the process steps recited in appealed claim 7
necessarily require a hafnium carbide-containing ceramic fiber that is a
structural ceramic fiber that patentably differs from the hafnium carbide-
containing fiber product of Hilmas. For example, appealed claim 7 does not
require any particular amount or type of cross-linking to have occurred in
the formation of the product such that Appellants’ argumentation with
respect to insufficient cross-linking resulting in low yields of ceramic
carries any persuasive weight in establishing a patentable product distinction
for the product of claim 7 (Br. 8). In this regard, we note that the low
7
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