Appeal No. 98-2456
Application No. 08/748,158
103 of the statute is eminently fair and acceptable. Id. at
688. The rationale for this conclusion is that the Patent and
Trademark 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. Thus,
this burden is shifted to the appellant in those instances
where prior art is applied by the examiner against product-by-
process claims and appellant must specifically point out or
demonstrate how the process limitations structurally
distinguish the claimed product from the product of the prior
art, which may be made by a different process.
In the present case, the examiner has not applied prior
art against the product-by-process claims before us on appeal.
Instead, the examiner has taken the position that the
structural limitations imposed on the claimed product by the
process limitations are "unclear," and has imposed on
appellant the requirement that he (appellant) specifically
point out the structural limitations imposed on the claimed
product. In particular, the examiner has inquired as to
whether there are "structural differences between an injection
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