Appeal No. 1997-1617 Page 5
Application No. 08/220,808
Our disposition of the examiner’s § 103 rejection of
product claims 25-28 is another matter. We note that the
patentability of a product is a separate consideration from
that of the process by which it is made. See In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
Moreover, determination of the patentability of a product-by-
process claim, such as appealed claims 25 and 26 is based on
the product itself. See In re Brown, 459 F.2d 531, 535, 173
USPQ 685, 688 (CCPA 1972). In other words, the patentability
of the product does not depend on its method of preparation.
See In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147
(CCPA 1969). Hence, if the claimed product is the same as or
obvious from a product of the prior art that is made by a
different process, the claim is unpatentable. See In re
Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-293 (Fed. Cir.
1983). If the prior art product appears to be substantially
the same as the claimed product, the burden is on the
applicant to establish with objective evidence that the
claimed product is patentably distinct from the product of the
prior art. See In re Brown, 459 F.2d at 535, 173 USPQ at 688.
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