Appeal No. 2002-0405
Application No. 07/325,269
exhibiting high temperature superconductivity were prepared by a
coprecipitation method. Bednorz, p. 190, col. 1. Claims 3 and
19/15 - 19/18 are product-by-process claims which are directed to
superconducting mixed-metal oxides made by a sol-gel method. The
patentability of product-by-process claims is based on the
product itself and not the method of production. In re Thorpe,
777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Where . . . 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 . . . .
Whether the rejection is based on "inherency" under
35 U.S.C. § 102, on "prima facie obviousness" under
35 U.S.C. § 103, jointly or alternatively, the burden
of proof is the same, and its fairness is evidenced by
the PTO's inability to manufacture products or to obtain
and compare prior art products.
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)
(citations and footnote omitted).14 Since there would be no
reason to expect that the claimed compounds differ from those of
Bednorz, claims 3 and 19/15 - 19/18 are anticipated by, or
obvious over, Bednorz.
14Gotor (see discussion, infra, pp. 16-17) does not provide the
requisite evidence required to overcome this rejection. The Gotor
article does not provide a comparison of the properties of
superconductors prepared by a sol-gel process with superconductors
made by a coprecipitation process as disclosed in Bednorz (i.e., Ref.
No. [17]).
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