To see how this plays out in the real world, a recent appeal by Nextec Applications, Inc. illustrates some of the issue. The application relates to a multi-layer structure to reduce hypothermia using a semi-permeable membrane and very low-absorption fabric. The low-absorption fabric is an encapsulated fabric having fibers and interstices, where the fibers are encapsulated by a polymer using a system having two coating blades. Nextec argued on appeal that a key to their invention was that the encapsulating system applies a force model to the blades based on initial properties of the fabric.
The issue here was that the features cited by Nextec were related to the manufacturing process, not the resulting structure of the fabric. The Patent Office was able to find prior art that showed the same resulting structure. That left Nextec arguing that they were able to achieve improved fabric performance because of their specific process. Whether true or not, this type of approach makes success difficult on appeal.
The reason is that the Patent Office shifts the burden to the Applicant when the argument about a new product degrades to one of differences in process. At this point, the Applicant needs to prove their point, which requires evidence. Many patent prosecution attorneys attempt to rely purely on attorney arguments; however the Board gives little weight to arguments without evidence when the applicant has the burden. This case is no different. The Board affirmed the rejection, as follows:
We agree with the Examiner that the polyester fabric enveloped with a silicon polymer disclosed in Caldwell appears to be the same or substantially the same as the polyester fabric encapsulated with a polymer recited in claim 1, and the burden therefore shifts to Appellants to establish an unobvious difference between the encapsulated fabric recited in claim 1 and Caldwell’s enveloped fabric. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (“[where a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.”)
So, if your invention is in a new process, work hard to find a different resulting structure. And if you cannot find something of significance in the structure, make sure you provide evidence of the difference in process and how that different process produces different results than the prior art process. The evidence could take the form of testing, expert analysis, etc.
