Appeal No. 1996-2253 Page 7
Application No. 08/199,907
Product-by-process claims are properly classified as
product claims. The process steps recited in product claims
therefore serve only to define the structure of the product
and thus the claims are not limited to the manipulative
aspects of the steps. In re Bridgeford, 357 Fd. 679, 683, 149
USPQ 55, 58 (CCPA 1966); In re Thorpe, 777 Fd. 695, 697, 227
USPQ 964, 966 (Fed. Cir. 1985). Thus, if the product of a
product-by-process claim is the same as or obvious from a
product in the prior art, the claim is unpatentable even
though the product was made by a different process. In such a
circumstance, when it is reasonable to conclude that the
product of a slightly different process is the same, the
burden is upon the appellant to come forward with evidence
showing that the product is indeed different. In re Brown,
173 USPQ 685 (CCPA 1972). The burden of proof for product-by-
product claims is lower because the Patent Office is not
equipped to manufacture products and make physical comparisons
to discover the differences between them. In re Fessmann,
489, Fd. 742, 744, 180 USPQ 324, 326 (CCPA 1974); In re Brown,
supra. Therefore, if the reactants of a process and the
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