Ex parte SPECTOR - Page 4




                     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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