Appeal No. 1996-2253 Page 8
Application No. 08/199,907
conditions under which the product is made are substantially
identical, the evidence will support a prima facie case of
unpatentability under 35 U.S. C. § 102/103. In re Spada, 911
Fd. 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Because the examiner did not separately analyze the
patentability of the product-by-process claims using the above
outlined legal analysis, we find that the issues, as
presented, do not permit a meaningful review of these claims.
Therefore, we remand the application to the examiner for a
determination of the patentability of the product-by-process
claims and a proper development of the issues.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 3-17, and 20-23 under 35 U.S.C. § 103 is reversed
and the application is remanded to the examiner.
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