Appeal 2007-4013
Application 09/768,512
encompassed by claim 1, as we interpreted this claim above, would have
been prima facie obviousness of to one of ordinary skill in the metallic
carrier arts familiar with the methods of joining the core and cylinder by
brazing to form the carrier. This person would have recognized that the
carriers of each Usui reference contain contact points between peripheries of
the core and the cylinder formed from molten brazing material present in the
recesses in the cylinder as well as from molten brazing material in areas
outside of the recesses. Indeed, the claimed carrier encompassed by claim 1
has a point of contact between the core and the cylinder formed from molten
brazing material in the “solder-rising preventing groove,” and further
encompasses carriers that are brazed along the periphery surfaces of the core
and cylinder on either side of recesses and/or grooves which retains molten
brazing material.
Accordingly, prima facie the claimed carrier products encompassed by
claim 1 are at least substantially identical to the carrier products disclosed by
the Usui references, shifting the burden to Appellants to present effective
argument or evidence patentably distinguishing the claimed carriers over
those of the references even though the ground of rejection is under §
103(a). See, e.g., In re Best, 562 F.2d 1252, 1254-56, 195 USPQ 430, 432-
34 (CCPA 1977).2 The Examiner bears a lesser burden of proof to establish
2 Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
See In re Ludtke, [441 F.2d 660, 169 USPQ 563 (CCPA 1971)].
Whether the rejection is based on “inherency” under 35 USC
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