Appeal No. 1997-4194
Application No. 08/357,435
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disclosed by Dubois as a film is defined as a thin covering or coating. The sole
distinction between the claimed subject matter and Dubois relates to the method of
forming the composition having the formula of the claimed subject matter.
Nonetheless both the claimed subject matter and Dubois react a stoichiometric amount
of each constituent element. See Example 1 of Dubois and compare the disclosure
therein with the requirement in claim 20 for a ”stoichiometric amount of each
respective alloy material.”
It is well settled that the patentability of a product claimed in a product-by-
process claim is determined based on the product itself, not on the method of making
it. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985) (“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 art product was
made by a different process.”). Whether a rejection is under 35 U.S.C. § 102 or
§ 103, when appellants’ product and that of the prior art appears to be identical or
substantially identical, the burden shifts to appellants to provide evidence that the
prior art product does not necessarily or inherently possess the relied-upon
characteristics of appellants’ claimed product. In re Fitzgerald, 619 F.2d 67,
70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433-34 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ
324, 326 (CCPA 1974). The reason is that the Patent and Trademark Office is not
able to manufacture and compare products. In re Best, 562 F.2d 1252, 1255,
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