Appeal No. 1999-1071
Application 08/453,770
in these rejections do not cure the deficiencies discussed in
connection with the combination of Kaetsu in view of Misura, we
need not discuss the additional references, and also reverse
these rejections.
II. Other Issues
We importantly note that the claims on appeal include
product-by-process claims.
We observe that the examiner states on page 5 of the answer
that the end product would be expected to exhibit the same
properties. We have also reviewed the prosecution history.
Upon this review, we are uncertain as to whether
patentablity of the product-by-process claims has been carefully
considered in view of the following law, and strongly recommend
that upon return of this application to the jurisdiction of the
examiner, such an evaluation should be undertaken.
When evaluating patentability at the patent office level, if
the claimed composition reads on a prior art composition, then it
will properly draw a rejection of unpatentability, even if
produced by a different process. In re Thorpe, 777 F.2d 695,
697, 227 USPQ 964, 965-66 (Fed. Cir. 1985); In re Hirao, 535 F.2d
67, 69, 190 USPQ 15, 17, (CCPA 1976). In this regard, the
examiner should consider whether to reject the product-by-process
claims under 35 USC § 103 over an art reference such as Misura.
So, for example, if Misura suggests a composition having the same
compounds as claimed by appellants, then Misura would suggest the
product, absent evidence from appellants that the claimed
composition materially differs form the prior art composition.
In re Marosi, 710 F.2d 799, 802, 218 USPQ 289, 292-93 (Fed. Cir.
1983).
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