Appeal 2007-3918
Application 10/203,926
In reaching this conclusion, we recognize that Mitsuboshi does not
mention the process limitations recited in claims 1 and 14 by which the
claimed foam rubber is made. However, as indicated in In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 965-66 (Fed. Cir. 1985):
The patentability of a product does not depend on its method of
production….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… [Citation omitted.]
It is incumbent upon the Appellants to show that the claimed process
limitations would have rendered the claimed foam rubber patentably
different from the foam rubber of the type described in Mitsuboshi.
Compare In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977). However, the Appellants have proffered no such evidence.
Accordingly, based on the factual findings set forth in the Answer
and above, we determine that the preponderance of evidence weighs most
heavily in favor of obviousness of the subject matter defined by claims 1, 3,
6, 9, 11, 12, and 14 within the meaning of 35 U.S.C. § 103.
Claims 7 and 10 based on Mitsuboshi and Haren and Mitsuboshi and
Noguchi, respectively
We find that Mitsuboshi teaches against using the method as recited in
claims 7 and 10 (¶ [0022]). Accordingly, we concur with the Appellants that
the preponderance of evidence weighs most heavily in favor of
nonobviousness of the subject matter recited in claims 7 and 10 within the
meaning of 35 U.S.C. § 103.5
5 In the event of further prosecution of the claimed subject matter, the
Examiner is advised to determine whether Gehlsen, together with Haren and
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