Appeal No. 95-2971
Application No. 07/742,260
We recognize that the claimed clarified konjac is prepared by a process which
differs from that disclosed by Sugiyama. However, it is established law that the
patentability of a product does not depend on its method of production. If the product 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. In re Thorpe, 777 F.2d 695, 697, 227
USPQ 964, 965-66 (Fed. Cir. 1985). Where, as here, the claimed and prior art products
are identical or substantially identical, the PTO can require an applicant to show that the
prior art products do not necessarily or inherently possess the characteristics of his
claimed product. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)
and In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228-29 (CCPA 1971).
We are mindful of the comparison, at page 17 of appellants' specification, which
compares the product of the claimed invention with a product resulting from a process
disclosed in U.S. Patent 3,928,322, which is similar to that of the Sugiyama patent herein
relied on; the results of which are summarized in Table II, at page 19 of the specification.
However, we do not find this comparison sufficient to distinguish the product disclosed by
Sugiyama from the claimed product, because it is not a side-by-side comparison with the
product resulting from Example 1 of Sugiyama, the closest prior art. The comparison of
the specification relates to a product and process disclosed in a different U.S. patent.
Further, we note that the filtration steps of the compared process differs from the that of
Example 1 of Sugiyama. Compare steps 2 and 3 at page 17 of the specification with the
filtration steps of Sugiyama at col. 3, lines 25-28. This difference could readily explain any
observed difference in the amount of insoluble materials detected.
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