Appeal No. 94-1709
Application 07/716,115
35 U.S.C. § 101 as drawn to non-statutory subject matter; and
(2) whether the examiner erred in rejecting claims 1, 4, 5, 9,
12 through 14 and 18 through 20 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Shepard and
Cherry.
35 U.S.C. § 101
Even though 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. In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
Mindful of that principle of law, we consider the
patentability of claims 9 and 18 through 20 under 35 U.S.C.
§ 101.
These claims define potato plants (cultivars) and tubers
having one salient characteristic, namely, resistance to
blackspot bruising. On this record, we find it reasonable to
conclude that the claims "read on" naturally occurring potato
cultivars and tubers resistant to blackspot. We refer to the
following passage at page 3, second paragraph, of appellants'
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