Appeal No. 1997-2632
Application No. 08/163,902
claims 3 and 6 are in product-by-process format, certain
principles of patent jurisprudence apply. We note that the
patentability of a product is a separate consideration from
that of the process by which it is made. See In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
Moreover, determination of the patentability of a product-by-
process claim is based on the product itself. See In re
Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). In
other words, the patentability of the product does not depend
on its method of preparation. See In re Pilkington, 411 F.2d
1345, 1348, 162 USPQ 145, 147 (CCPA 1969). Hence, if the
claimed product is the same as or obvious from a product of
the prior art that is made by a different process, the claim
is unpatentable. See In re Marosi, 710 F.2d 799, 803, 218
USPQ 289, 292-293 (Fed. Cir. 1983). If the prior art product
appears to be substantially the same as the claimed product,
the burden is on the applicant to establish with objective
evidence that the claimed product is patentably distinct from
the product of the prior art. See In re Brown, 459 F.2d at
535, 173 USPQ at 688.
Here, as noted above, appellant has acknowledged that “it
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