Appeal No. 2000-0002
Application 08/848,477
that a product produced in the previously patented process
suggests the now claimed product does not meet the burden.
My colleagues point to a statement made in the Brief at
page 9, lines 19-20 which states that “[t]he present claims
define a product made by one or more of the processes in the
patent” and conclude that Appellants have not challenged the
examiner’s factual determinations. However, my reading of the
entire paragraph in which the statement is contained leads me
to believe that the statement was made to point out the
relationship of the conflicting claims as directed to
different statutory classes of invention (process and
product). While the statement does indicate that the product
can be made by the patented processes, Appellants also point
out that the patented processes do not limit the reactants
loaded into the reactor and, therefore, the patented processes
can be used to make a materially different product (Brief,
page 10, lines 5-6). The Appellants argue that this
difference indicates that the inventions are separate and
distinct. The Examiner must estabish that the conflicting
claims are not “patentably distinct”. In re Berg, 140 F.3d
1428, 1431, 46 USPQ2d 1226, 1229 (Fed. Cir. 1998). Saying that
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