Appeal No. 1996-0876
Application 08/123,144
As to claims 18 through 24, we point out that these claims are directed to the nuts
produced by the appellant’s process of food treatment. Thus, the nuts of claims 18 through
24 are defined in a product-by-process format. In re Thorpe, 777 F.2d 695, 697, 227
USPQ 964, 966 (Fed. Cir. 1985). When claims are presented in this manner, it is the
patentability of the product which must be established. Thus, upon the return of this
application, the examiner should determine whether there are any characteristics which
distinguish the claimed products from the nuts described by the prior art. That is, if there
are no substantial differences between the claimed nuts and those described in the prior
art, the examiner should consider whether the prior art products anticipate, or render
obvious, the inventions described in claims 18 through 24. In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-334 (CCPA 1977) (“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”).
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