Appeal No. 1996-2738
Application 08/252,501
process steps for making an additive product in method of use
type claims. The solicitor argued that the claim was
analogous to a product-by-process claim and that the court
should not give weight to the process of preparation
limitations. Hirao, 535 F.2d at 69, 190 USPQ at 17. Contrast
the Hirao case to claim 25 here on appeal where appellants do
not specifically claim the process of making the cationic
polysaccharide derivative but couch the claimed
additive in product-by-process form. Accordingly, we construe
claim 25 on appeal as a method of making paper where a
product-by-process (the cationic polysaccharide derivative) is
added. A lesser burden of proof is required of the examiner
to establish a prima facie case of anticipation/obviousness
for product-by-process claims. In re Fessman, 489 F.2d 742,
744, 180 USPQ 324, 326 (CCPA 1974). “...[T]he patentability
of the products defined by the claims, rather than the
processes for making them, is what we must gauge in light of
the prior art.” In re Wertheim, 541 F.2d 257, 271, 191 USPQ
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