Appeal 2007-1019
Application 09/851,231
“[e]ven if the microchannel half cavities 20 and 22 in Cammack et al. are
etched and subsequently annealed, and not formed by annealing as disclosed
in Appellants’ present invention, the end product is the same in structure as
that disclosed in Appellants’ present invention,” and Appellants have not
proffered evidence to the contrary (Answer 6, second para.).
As for product-by-process claims 17-19, it is well settled that when
prior art discloses a product which reasonably appears to be either identical
with or only slightly different than a product claimed in a product-by-
process claim, the burden is on the applicant to establish with objective
evidence that the products are not, in fact, substantially the same. In re
Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). In the
present case, Appellants have not shouldered their burden of demonstrating
that their microchannels formed by annealing are substantially different than
the microchannels formed by etching in the Cammack patent.
As for the § 103 rejection of claims 12, 16, and 18, Appellants have
not rebutted the reasonable position articulated by the Examiner in the
Answer, but have only relied upon the asserted differences between
microchannels formed by annealing and etching. Appellants’ statement at
page 18 of the Brief that the differences between Cammack and Appellants’
invention defined by claims 12, 16, and 18 “includes the fact that the
elements of claims 12, 16 and 18 are not found in the Cammack et al.
reference” is not a substantive argument which sets forth why the differences
would have been nonobviousness to one of ordinary skill in the art within
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