Appeal No. 1996-0823
Application No. 08/217,189
(2) reacting the dispersed chitosan with propylene oxide to form
N-hydroxypropyl-chitosan; and (3) working up the product in a series of steps which
include, inter alia, removing excess alkylation agent and drying at 50° C in a vacuum
drying oven. In our judgment, the product of claim 15 reasonably appears to be the same
or substantially the same as the product prepared by Lang In column 10, example 4.
As stated in In re Thorpe 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985),
even though product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product itself. The
patentability of a product does not depend on its method of production. 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. [citations omitted].
Likewise, as the court stated in In re Brown 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972),
when the prior art discloses a product which reasonably appears to be either
identical with or only slightly different than a product claimed in a
product-by-process claim, a rejection based alternatively on either section
102 or section 103 of the statute is eminently fair and acceptable. As a
practical matter, the Patent Office is not equipped to manufacture products
by the myriad of processes put before it and then obtain prior art products
and make physical comparisons therewith.
Following those principles of law, we find that the examiner established a prima facie
case of obviousness of claim 15 and that the burden of persuasion shifted to appellants
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