Appeal No. 1996-0876 Application 08/123,144 As to claims 18 through 24, we point out that these claims are directed to the nuts produced by the appellant’s process of food treatment. Thus, the nuts of claims 18 through 24 are defined in a product-by-process format. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). When claims are presented in this manner, it is the patentability of the product which must be established. Thus, upon the return of this application, the examiner should determine whether there are any characteristics which distinguish the claimed products from the nuts described by the prior art. That is, if there are no substantial differences between the claimed nuts and those described in the prior art, the examiner should consider whether the prior art products anticipate, or render obvious, the inventions described in claims 18 through 24. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-334 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product”). 10Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007