Appeal 2007-2210
Application 10/711,154
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336
(Fed. Cir. 2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)).
The claimed invention is directed to a degradation resistant
composition based on tetragonal zirconia polycrystalline ceramic (Y-TZP)
material that has been densified by sintering (Specification [Para 16]). The
Specification specifies that the Y-TZP material is formed into a desired
final shape; subsequently, it is coated with alumina by an ion beam assisted
deposition (IBAD) process (Specification [Para 17]). The claimed
invention specifies that coating has a total porosity of less than about 1.0
percent.
We initially take exception to the Examiner’s position that the
process limitation “ion beam assisted deposition” has no patentable weight,
since the claimed invention is recited in a product-by-process format
(Answer 3). In the examination of a claim that has been drafted in
product-by-process format, the Examiner has the burden under §§ 102/103
to establish that the prior art reasonably appears to disclose a product that
is identical with or only slightly different from the product claimed. See In
re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re
Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 325-26 (CCPA 1974).1
The Examiner has not met his burden in this case. The specification
discloses that the IBAD process creates a conformal coating that is dense
1 Product-by-process claims are normally rejected under 35 U.S.C. §102 as
anticipated by, or in the alternative under 35 U.S.C. §103 as obvious over,
the cited prior art.
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