Appeal No. 1999-0203
Application No. 08/399,384
the product claimed in a product-by-process claim. See In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980).
“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
[footnote omitted].” Id. If the examiner has reason to believe
that a functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may, in fact,
be an inherent characteristic of the prior art, the examiner can
require an applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied
on. Id. Ultimately, it is the patentability of the products
defined by the product-by-process claims, and not the processes
for making them, that must be gauged in light of the prior art.
See In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103 (CCPA
1976); In re Fessman, supra; and In re Brown, supra. Based on
the record before us, we determine that the examiner has not
established a prima facie case for anticipation or obviousness,
either for the process claims or with the lesser burden of proof
necessary for the product-by-process claims.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007