Appeal No. 2001-0651
Application 08/134,187
reasonable appears to be either identical with or only slightly
different than a product claimed in a product-by-process claim, a
rejection based alternatively on either section 102 or section
103 of the statute is eminently fair and acceptable. Id, at 688.
The rationale for this conclusion is that the Patent and
Trademark Office 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. Thus, this
burden is shifted to appellants in those instances where prior
art is applied by the examiner against product-by-process claims
and appellants must specifically point out or demonstrate how the
process limitations structurally distinguish the claimed product
from the product of the prior art, which may be made by a
different process.
As is apparent from the above-noted case law, appellants are
normally only put to the burden of specifying the exact
structural limitations imposed on the claimed product by the
process limitations when the examiner has applied prior art which
teaches, discloses or makes obvious a product which reasonably
appears to be either identical with or only slightly different
than a product claimed in a product-by-process claim. This the
20
Page: Previous 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Next
Last modified: November 3, 2007