Appeal No. 96-2808
Application 08/102,708
on the fact that t-butyl and t-amyl ethers are known fuel additives as the motivating factor. However, we
do not find this fact, in and of itself, sufficient evidence which would have motivated one skilled in the art
to modify Bruderreck as suggested by the examiner because we find no evidence or teaching in the prior
art which would suggest the desirability of making such a modification. The mere fact that the prior art
could be modified does not make such a modification obvious unless the prior art suggests the desirability
for using Leum’s method in place of Bruderreck’s method. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). On the record before us, the suggestion to substitute the method
of preparing the ether mixture in accordance with the teachings of Leum for the blending method disclosed
by Bruderreck could have only come from appellants’ disclosure. Accordingly, the examiner’s rejection
of claims 21-26, 29 and 30 over the applied prior art is reversed.
As for claims 31, 38 and 39, these claims are directed to a product comprising a mixed ether and
gasoline. Because the products recited in these claims are recited in terms of the process for making them,
the claims are in product-by-process form. The patentability of such claimed subject matter is determined
based on the product itself, and not on the process of making it. See In re Thorpe, 777 F.2d 695, 697,
227 USPQ 964, 966 (Fed. Cir. 1985) (“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 art product was
made by a different process.”). Whether a rejection is under 35 U.S.C. § 102 or § 103, when appellants’
product and that of the prior art appear to be identical or substantially identical, the burden shifts to
appellant to provide evidence that the prior art product does not necessarily or inherently possess the relied
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