Appeal No. 1996-0647
Application No. 07/871,401
With regard to product-by-process claims, it is the
patentability of the products defined by these claims, and not
the processes for making them, which must be gauged in light
of the prior art. In re Wertheim, 541 F.2d 257, 271, 191 USPQ
90, 103 (CCPA 1976). When the prior art discloses a product
which reasonably appears to be identical or only slightly
different from the product claimed in a product-by-process
claim, a rejection either under 35 U.S.C. § 102 based on
“inherency” or a rejection under 35 U.S.C. § 103 on “prima
facie obviousness” is proper. 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 (CCPA 1977). A lesser burden of proof
is needed to establish a prima facie case of obviousness for
product-by-process claims and, once established, the burden
shifts to appellant to prove that the prior art products do
not inherently or necessarily possess the characteristics of
the claimed product. In re Fessman, 489 F.2d 742, 744, 180
USPQ 324, 326 (CCPA 1974).
"Technical News" discloses a bleached kraft pulp “without
any dioxin being formed” (page 36, left column). As noted by
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