Appeal 2007-2863
Application 10/934,507
1 In the Advisory Action of 10 July 2006, the Examiner explicitly
2 brought up the point concerning the difference in unsaturation.
3 For whatever reason, there is no comment in the Appeal Brief
4 whatsoever concerning the Examiner's unsaturation observation. We have to
5 assume on this record that there is no answer.
6
7 E. Principles of law
8 Where, as here, the claimed and prior art products are identical or
9 substantially identical, or are produced by identical or substantially identical
10 processes, the PTO can require an applicant to prove that the prior art
11 products do not necessarily or inherently possess the characteristics of his
12 claimed product. In addition to In re Fitzgerald, cited by the Examiner, we
13 also call attention to (1) In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
14 433 (CCPA 1977) and (2) In re Spada, 911 F.2d 705, 709, 15 USPQ2d
15 1655, 1658 (Fed. Cir. 1990).
16
17 F. Discussion
18 Asahi Glass has not singled out any claim for particular consideration.
19 Accordingly, claims 1-16 stand or fall together. We have focused on claim 1
20 and decide the appeal on the basis of claim 1. 37 C.F.R. § 41.67(c)(1)(vii)
21 (2006).
22 The Examiner has shown that Saito Example 1 uses materials falling
23 within the scope of the claim 1. The Examiner then goes on to say that it is
24 not apparent that there is any difference between the product of Saito
25 Example 1 and the subject matter of claim 1. We perceive no error in the
10
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