Appeal No. 1999-0700 Page 16
Application No. 08/590,580
REMAND TO THE EXAMINER
Pursuant to 37 CFR § 1.196(e), we remand the application to the examiner for consideration of
the following issues:
1. Is the subject matter of claims 5-7 and 13-18 unpatentable under 35 U.S.C. § 103 over the
combined teachings of Kok, Lowe and Knapick, either alone or in combination with additional prior art
references? While this panel has specifically applied the teachings of Kok, Lowe and Knapick to
claims 1-4, 8-12 and 19-23 in the new ground of rejection set forth above, we leave the determination
of the patentability of the subject matter of the remaining claims over these references to the examiner.
2. Are any of the product-by process claims 10-18 anticipated or rendered obvious by Kok
alone?
The patentability of a product does not depend on its method of production. 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. In
re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). Moreover, where a
product-by-process claim is rejected over a prior art product that appears to be identical,
although produced by a different process, the burden is upon the applicant to come forward
with evidence establishing an unobvious difference between the claimed product and the prior
art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93 (Fed. Cir. 1983). Applying
this principle to claims 10-18, the examiner should consider whether the Kok product, although
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