Appeal No. 1998-2531
Application 08/574,279
At the outset, we note that the claims on appeal are in product-by-process format.
Accordingly, a determination of patentability is based on the product itself. As the Court in
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985), explains:
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.
Thus, the sole issue in this appeal is whether the examiner has established that the claimed candy-
coated raisins are the same as or obvious from candy-coated raisins produced by the Daum process.
See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (the examiner bears
the initial burden of presenting a prima facie case of patentability).
The process disclosed in Daum and the process of the claimed invention are different. The
examiner recognizes as much. See Answer, p. 4 ("Claim 1 differs from the reference [(Daum)] in the
use of a heated liquid."). Nevertheless, the examiner maintains that the coating of a candy-coated raisin
produced by the Daum process would necessarily be brittle due to the cooling step and the sugar
concentration. See Answer, pp. 4-5. However, there is simply nothing in the record to support the2
examiner's conclusion. Although Daum does disclose several properties of the coating produced by the
disclosed process, Daum is nevertheless silent as to whether the coating produced thereby would be
2The examiner further asserts that the coating of a candy-coated raisin produced by the Daum
process would necessarily be thin. See Answer, p. 5 ("no definition is seen as to what 'thin' is"); see
also Daum, col. 4, lines 31-34. Based on the record before us, we agree with the examiner that a
coating produced by the Daum process would be "thin."
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