Appeal No. 2000-0583
Application No. 08/955,984
balloon has an increased strength, be made from the same
starting material as the claimed balloon.
As a practical matter, the PTO is not equipped to
manufacture products by the myriad of processes put before it
and then obtain prior art products and make physical
comparisons therewith. In re Brown, 459 F.2d 531, 535, 173
USPQ 685, 688 (CCPA 1972). Thus, the burden of proof on the
PTO in making out a case of prima facie obviousness [or
anticipation] for product-by-process claims is less than when
a product is claimed in the more conventional fashion. In re
Fessman, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974).
Once the PTO has made out a prima facie case that appellants’
claimed product and the product of the prior art reasonably
appear to be the same, the burden shifts to appellants to
prove otherwise. Thorpe, 777 F.2d at 697, 227 USPQ at 966.
For the reasons outlined above, we conclude that a prima
facie case has been established that Levy’s balloon and
appellants’ claimed balloon reasonably appear to be the same,
thereby shifting the burden to appellants to prove otherwise.
As explained in the following discussion, appellants have
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