Appeal No. 95-2742
Application 08/006,411
Accordingly, since the examiner has established a prima facie
case of obviousness as to appealed claims 9 through 11, the
burden of going forward has shifted to appellants to submit
argument or evidence in rebuttal. In view of the argument in
rebuttal presented in appellants’ brief, the patentability of the
claimed invention as a whole must again be assessed based on the
record as a whole, including all the evidence of obviousness and
of nonobviousness, giving due consideration to the weight of
appellants’ arguments. See generally In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), In re Johnson,
747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984), In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984), and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976).
We have carefully considered all of appellants’ arguments and
the evidence presented in the specification. While we agree with
appellants that the claimed processes of appealed claims 1
through 8 are patentable over the prior art as applied by the
examiner for the reasons we have set forth above, those reasons
do not extend to the decontaminated hydrochloric acid products
encompassed by appealed claims 9 through 11. It is well settled
by the authority we have cited above that the patentability of
claimed products is determined based upon the products per se and
not upon the process limitations by which the claimed products
are defined. Indeed, this principle of patent law is axiomatic
even where process limitations in a product-by-process claim have
been presented as a process claim which has been held to be
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