that of the claimed subject matter. We further find that Zank, moreover, provide evidence
that nitrogen forms a part of the ceramic following pyrolysis. See Tables 1, 2, and 3.
Based upon the above findings and analysis, we cannot agree with the examiner’s
threshold determination that the claimed subject matter appears to be substantially the same
as the composition of the prior art. See Answer, page 4.
The patentability of a product claimed in a product-by-process claim is determined based
on the product itself, not on the method of making it. See In re Thorpe, 777 F.2d 695, 697, 227
USPQ 964, 966 (Fed. Cir. 1985) (“If the product in a product-by-process claim is the same as
or obvious from a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.”). Whether a rejection is under 35 U.S.C. § 102 or
§ 103, when appellants’ product and that of the prior art appears to be identical or
substantially identical, the burden shifts to appellants to provide evidence that the prior art
product does not necessarily or inherently possess the relied-upon characteristics of
appellants’ claimed product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977); In re Fessmann,
489 F.2d 742, 745, 180
USPQ 324, 326 (CCPA 1974). The reason is that the Patent and Trademark Office is not able
to manufacture and compare products. See Best, 562 F.2d at 1255, 195 USPQ at 434; In re
Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007