Appeal 2007-1054
Application 10/640,067
coming forward with evidence or argument shift to the Appellant. Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788. Thus, the Examiner must not only assure that the
requisite findings are made, based on evidence of record, but must also
explain the reasoning by which the findings are deemed to support the
Examiner’s conclusion.
ANALYSIS
A. 35 U.S.C. § 102(b) REJECTION
We begin our analysis by noting that claims 28 through 35 are
characterized as a product-by-process. It has been held that “even though
product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself. The
patentability of a product does not depend on its method of production. If
the product in the product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” In re Thorpe, 777 F.2d 695, 697,
227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). On the other hand,
the structure implied by the process steps should be considered when
assessing the patentability of product-by-process claims over the prior art,
especially where the product can only be defined by the process steps by
which the product is made, or where the manufacturing 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).
In our view, the step of laser machining into the substrate, as recited
in claim 28, does not appear to impart any distinctive structural
8
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