Appeal No. 94-2527
Application 07/816,715
compression of a superconductor material in admixture with glass much less
concerning the uniaxial compression of such a mixture at a temperature between the
transition temperature T and the crystallization temperature T of the glass as recitedg x
in the appellants’ independent claim 11. In the record before us, the only disclosure of
uniaxially compressing a mixture of glass and superconductor material at an elevated
temperature and particularly at a temperature of between T and T is found in theg x
appellants’ own specification rather than the applied prior art. Under these
circumstances, it is our opinion that the examiner’s abovequoted conclusion of
obviousness stems from his unwitting application of impermissible hindsight derived
from the inventors’ own work rather than some teaching, suggestion, or incentive
derived from the prior art. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
As seemingly recognized by the examiner, the appealed claims are product-by-
process claims, the patentability of which is based upon the product itself rather than
the process by which it is made. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985). Nevertheless, we disagree with the examiner’s belief that he has
shifted to the appellants the burden of proving that their claimed product is patentably
distinct from the prior art. In the absence of a teaching in the prior art to uniaxially
compress a powdered mixture of glass and superconductor material at a temperature
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