Appeal No. 1997-3116
Application 08/294,953
claims 1-8. The rationale underlying the two rejections differs, however, in a way
that makes Appellant’s argument unpersuasive here.
The examiner rejected claims 9 and 10 on the basis that the claimed,
deposited cell lines were the same as or not patentably distinct from cell lines
disclosed by the prior art. That is, the examiner considered the similarities
between the T. ni egg-derived cell lines disclosed by the prior art to be sufficient
to shift the burden to Appellant to show evidence that the claimed cell lines differ
from the prior art cell lines. Appellant has neither argued that the similarities are
insufficient to justify shifting the burden of proof nor come forward with evidence
of dissimilarity to show that claims 9 and 10 do not encompass the prior art cell
lines.
Appellant’s only basis for arguing that the claimed cell lines differ from
those in the prior art is that the prior art cell lines were established in medium
containing serum, while the claimed cell lines were established in serum-free
medium. This difference, however, is not in the properties of the claimed
products, but rather in the method by which the product was made. Claims 9 and
10 are not drawn to a method of making a cell line by establishing it in serum-free
medium; the claims are to a product. “[The] patentability of a claim to a product
does not rest merely on a difference in the method by which that product is
made. Rather, it is the product itself which must be new and unobvious.” In re
Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969) (emphasis in
original). Appellant is arguing that the product is different because the manner in
which it is made is different. The patentability of the product, however, must be
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