Appeal 2007-0736
Application 10/480,239
Furthermore, we agree with the Examiner that the method of making
the claimed ruthenium catalyst does not limit the claim, as it appears Shokal
and Setoyama disclose substantially the same catalyst (FFs 1, 7, 10-12, 14 &
16):
[E]ven though the product-by-process claims are limited by
and defined by the process, determination of patentability is
based on the product itself. The patentability of a product
does not depend on its method of production. If the product
in the 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.
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985)
(citations omitted). In such a situation, the burden shifts:
Where a product-by-process claim is rejected over a
prior art product that appears to be identical, although
produced by a different process, the burden is upon the
applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the
prior art product.
In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93 (Fed. Cir. 1983).
Appellants have not provided any evidence there is an unobvious
difference between their ruthenium catalyst and those of the prior art. (FF
19.) Thus, the Examiner has made a prima facie case that Appellants’
ruthenium catalyst is in the prior art or at least obvious in view of the prior
art teachings. Given the remaining prior art teachings, the Examiner has
established a prior facie case of obviousness. (FFs 6-18.)
We disagree with Appellants’ argument that the skilled artisan would
not have been motivated to combine the three cited references, given they
are in the same field of endeavor and each utilizes a ruthenium catalyst to
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