Appeal No. 1996-0858 Page 9
Application No. 08/117,648
cellulase solution for a period of time at an elevated
temperature as specified in the comparative example A.
Thereafter, the treated toweling is rinsed and dried to
recover a softened toweling product.
Claim 17 is directed to a cotton toweling product that is
described by way of a product-by-process claim. It is well-
settled that the determination of the patentability of a
product-by-process claim is based on the product itself. With
regard to product-by-process claims, the Federal Circuit has
indicated in In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964,
965-66 (Fed. Cir. 1985) citing In re Brown , 459 F.2d 531, 3
3[T]he lack of physical description in a
product-by-process claim makes determination of the
patentability of the claim more difficult, since in spite of
the fact that the claim may recite only process limitations,
it is the patentability of the product claimed and not of the
recited process steps which must be established. We are
therefore of the opinion that 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. In re Brown, 459
F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
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