Appeal No. 96-0359
Serial No. 08/083,866
and properties, the burden is shifted to the applicant to prove with objective evidence that the product
of the prior art does not necessarily possess the characteristics attributed to the claimed product. In re
Spada, supra. In the present case, we find that the ethylene blends of Lee sufficiently correspond to
appellants' claimed ethylene blend to require appellants to establish on this record that ethylene blends
within the scope of the appealed claims are patentably distinct from the ethylene blends fairly taught by
Lee. However, in our view, appellants have not met their burden.
At page 18 of the Brief, appellants argue claim 6 "which refers to MFR of 80 to 150 is not
described or enabled by the Lee disclosure." However, we agree with the examiner "the claimed
'about...10 g/10 min.' reads on Lee's 11.6 g/10 min." (Answer page 10) and find that Lee is an enabling
disclosure for the reasons discussed above.
Finally, at pages 18 and 20 of the Brief, appellants argue the process parameters in Lee are
different from those of claim 13, specifically Lee calls for the lowest ethylene partial pressure in the zone
in which the HMW component is made. In other words, Lee reverses the two reactors used in the
claimed process (Reply Brief page 2).
As discussed in the obviousness rejection based on Bailey above, the patentability of a
product-by-process claim is based on the product itself and in cases where a product-by-process claim
is rejected over a prior art product that appears to be the same or similar to the claimed product,
although produced by a different process, the burden is on applicants to produce evidence establishing
an unobvious difference between the claimed product and the prior art product. We agree with the
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