Appeal No. 1998-2702
Application No. 08/466,507
the guidance provided by our reviewing court is that the
determination of patentability is based on the product itself,
and not on its method of production. That is, if the product
in the 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. See
In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
1985) and Atlantic Thermoplastics Co. v. Faytex Corp., 970
F.2d 834, 843-47, 23 USPQ2d 1481, 1488-91 (Fed. Cir. 1992).
Once a rationale has been provided tending to show that the
claimed part appears to be the same or similar to that of the
prior art, albeit that the prior art part might have been
produced by a different process, the burden shifts to the
appellant to come forward with evidence establishing an
unobvious structural difference between the claimed part and
the prior art part. See In re Marosi, 710 F.2d 799, 803, 218
USPQ 289, 292-93 (Fed. Cir. 1983).
Looking now to claim 4, the “part” defined therein,
considered apart from the method steps in the claim, requires
the presence of a deep draw corner having a substantially
uniform thickness with a wall on the adjacent corner, with the
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