Appeal No. 98-1455 Page 9
Application No. 08/625,936
966 (Fed. Cir. 1985) (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. 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.). Once the appellants have been
provided with a rationale tending to show that the claimed
product appears to be the same or similar to that of the prior
art, although produced by a different process, the burden
shifts to the appellants to come forward with evidence
establishing an unobvious difference between the claimed
product and the prior art product. See In re Marosi, 710 F.2d
799, 803, 218 USPQ 289, 292-93 (Fed. Cir. 1983). The
appellants have not come forward with any evidence to satisfy
that burden. Compare In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433-34 (CCPA 1977); In re Ludtke, 441 F.2d 660, 664,
169 USPQ 563, 566-67 (CCPA 1971).
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