Appeal No. 95-3313
Application 08/134,851
process Claim 9, the patentability of the product of Claim 14
cannot have been adequately considered. The PTO’s examination
of the subject matter appellants claim is incomplete until the
examiner has considered whether polytetrafluoroethylene wet
powder of Claim 14 on appeal is the same or substantially the
same as the polytetrafluoroethylene wet powder prepared by
Whitlock’s process or other patentably distinct prior art
processes. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964,
966 (Fed. Cir. 1985):
[E]ven though product-by-process claims are limited by
and defined by the process, determination of
patentability
is based on the product itself. In re Brown, 459 F.2d
531,
535, 173 USPQ 685, 688 (CCPA 1972) . . . .
The patentability of a product does not depend on
its method of production. In re Pilkington, 411 F.2d
1345,
1348, 162 USPQ 145, 147 (CCPA 1969). 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.
In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93
(Fed. Cir. 1983) . . . .
. . . The burden of presenting a prima facie case
of unpatentability resides with the PTO, as discussed in
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984).
When the record indicates that the PTO has correctly
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