Appeal No. 95-2633
Application 08/121,663
“The mere fact that the prior art may be modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the desirability of the modification.” In re Fritch, 972
F.2d 1260, 1266, 23 USPQ2d 1780, 1784-85 (Fed. Cir. 1992); In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). Nothing in the prior art relied upon by the examiner in rejecting the
process claims suggests the desirability of using a temperature of “about 20°C to about 80°C. ”4
The rejection of claims 1-4 is reversed.
As we indicated above, claims 5, 14 and 15 are product-by-process claims. While
product-by-process claims are limited by and defined by the process, determination of patentability is
based solely on the product itself. In re Thorpe, 777 F.2d 695, 697, 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). The patentability of a product does not depend on its
method of production. Thorpe 777 F.2d at 697, 227 USPQ at 966; Pilkington, 411 F.2d at 1348, 162
USPQ at 147. 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.
Thorpe 777 F.2d at 697, 227 USPQ at 966; In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93
(Fed. Cir. 1983). Thus, in evaluating the patentability of product-by-process claims we compare the
claimed product with the product described in the prior art. The comparison includes the expressly
claimed properties and characteristics as well as those implicitly resulting from the process.
Claim 5 is directed to an olive oil “suitable for use as an enteral or parenteral foodstuff.” Claims
14 and 15 are directed to parenteral and enteral formulations, respectively, “including a purified olive oil
product . . . having an acceptably low amount of peroxides, free acids and pigments” for enteral,
parenteral and nutritional administration. Thus the issue with respect to the product-by-process claims
4
In this regard, we note that bleaching of vegetable oils, such as olive oil, subsequent to
deacidification is typically carried out at a temperature of 90-110°C under a vacuum. 23 Kirk-Othmer Encyclopedia of
Chemical Technology, pp. 717, 724-26 (3rd Ed., 1983).
5
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