Appeal No. 95-3313
Application 08/134,851
adduced a prima facie case, the burden shifts to the applicant
“to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.
In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980);
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977).” In re Thorpe, 777 F.2d at 698, 227 USPQ at 966.
In response to the examiner’s rejection here, appellants
submitted a Declaration by Tetsuya Higuchi, filed December 17,
1993 (Paper No. 20), seemingly to show that products made by
the process of Claim 9 are patentably distinct from products
made by the processes described by Whitlock. Thus, it appears
from this record that the examiner not only failed to adduce
the applicable precedent, i.e., In re Thorpe, supra, with
regard to the evidence upon which an examiner may rely on to
establish the prima facie unpatentability of product-by-
process claims and shift the
burden of proof, but also to understand the significance of
Higuchi’s Declaration. Accordingly, we remand this case to
the examiner to determine whether Claim 14 is prima facie
unpatentable under 35 U.S.C. § 102 and/or 103 over Whitlock,
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