Appeal No. 2005-2462
Application No. 09/906,977
Villagran, like appellants, discloses a method of making
dehydrated potato products by comminuting cooked potatoes to form
a wet mash and dehydrating the mash to form a potato product. As
recognized by the examiner, and urged by appellants, Villagran
does not disclose cooking the potatoes to a hardness in a range
of about 65 gf to about 500 gf. Indeed, Villagran is totally
silent regarding the hardness of the cooked potato. However, it
is well settled that when a claimed product reasonably appears to
be substantially the same as a product disclosed by the prior
art, the burden is on the applicant to prove that the prior art
product does not necessarily or inherently possess characteris-
tics contributed to the claimed product. In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best, 562
F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). This principle
of patent law also applies to product-by-process claims, the
format in which the presently appealed claims are drafted. See
In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
1985). In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145,
147 (CCPA 1969).
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007