Appeal No. 1998-1893
Application 08/088,125
technical reasoning in support of this argument, and the
examiner’s mere speculation is not a sufficient basis for a prima
facie case of obviousness. See In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968); In re Sporck, 301 F.2d 686, 690, 133 USPQ 360, 364 (CCPA
1962). For this reason and because the examiner has not
explained how the other applied references remedy this deficiency
in Macpherson, the METHOCEL references and Wittwer (answer,
page 9), we reverse the rejection of claim 18 and claims 19, 21,
24, 26 and 27 which depend therefrom.
Claim 20
Claim 20 is a product-by-process claim. Hence, the
patentability of the claimed invention is determined based on the
product itself, not on the method of making it. 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
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