Appeal No. 1997-1801
Application 08/351,162
toner composition.
8. A process according to claim 1, wherein said pellets are mixed while said
grinding is being conducted.
9. A process according to claim 1, wherein said mixture of pellets is formed
before said grinding is conducted.
13. A powdered color toner composition prepared by the process of claim 1.
III.
Claims 13 and 14 are product-by-process claims. The primary examiner has rejected these claims
under 35 U.S.C. §102(b) relying on Tomanek and Nakano and under § 102(e) relying on Anderson. We
affirm both rejections.
A.
Product-by-process claims are product claims, not process claims. Atlantic Thermoplastics Co.
Inc. v. Faytex Corp., 970 F.2d 834, 844-45, 23 USPQ2d 1481, 1490 (Fed. Cir. 1992); In re
Bridgeford, 357 F.2d 679, 682, 149 USPQ 55, 58 (CCPA 1966). The determination of the patentability
of a product-by-process claim is based on the product not the process. In re Thorpe, 777 F.2d 695, 697,
227 USPQ 964, 966 (Fed. Cir. 1985); In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA
1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). Thus, “[i]n
determining patentability [of product-by-process claims] we construe the product as not limited by the
process stated in the claims.” Scripps Clinic & Research Foundation v. Genentech Inc., 927 F.2d 1565,
1583, 18 USPQ2d 1001, 1016 (Fed. Cir. 1991). If the product in a 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. Thorpe, 777 F.2d at 697, 227 USPQ at 966; In re Marosi, 710 F.2d
799, 803, 218 USPQ 289, 292-93 (Fed. Cir. 1983); In re Fessman, 489 F.2d 742, 180 USPQ 324
(CCPA 1974). The burden is then upon the applicant to come forward with evidence establishing that the
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