Appeal No. 1997-3497 Page 8
Application No. 08/312,295
modulus of elasticity properties as herein claimed. In this
regard, we note that claim 1 and the claims which depend
therefrom are drawn to a product film structure that is
described, at least partially, in terms of the stretching process
by which it is made. The patentability of such claims is
determined based on the product itself. See In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985) ("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.").
Whether a rejection is under 35 U.S.C. § 102 or § 103, where, as
here, appellants' product and that of the prior art appear to be
identical or substantially identical, the burden shifts to
appellants to provide evidence that the prior art product does
not necessarily or inherently possess the relied upon
characteristics of appellants' claimed product. See In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977); In
re Fessmann, 489 F.2d 742, 745, 180 USPQ 324, 326 (CCPA 1974).
The reason is that the Patent and Trademark Office is not able to
manufacture and compare products. See Best, supra; In re Brown,
459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
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