Appeal No. 1999-2509
Application 08/752,917
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.")
Where, as here, the examiner reasonably establishes that appellant’s product and that
suggested by the applied prior art appear to be substantially identical, the burden shifts to
appellant to provide evidence that the suggested product of the applied prior art does not possess
any relied upon characteristics that are necessarily a part of appellant’s 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).
Here, it is my view that appellant primarily argues for the patentability of the appealed
claims based on alleged method differences rather than persuasively arguing in the briefs, let
alone establishing with objective evidence commensurate in scope with the claims, how the
products of the appealed claims are necessarily patentably distinguished over the products
suggested by the applied prior art relied upon in the separate rejections advanced by the
examiner. It is worth noting that the process by which the claimed product is made is set forth in
“comprising” language. See representative claim 14, on which I would decide this appeal. Thus,
the process by which the claimed product is made is open to other process steps. Indeed,
appellant explicitly describes many other process steps which may be employed, such as in the
paragraph bridging pages 5 and 6 of the specification. In examining that carryover paragraph, it
becomes clear that the claimed product is inclusive of products that are obtained from the
extrudate by further processing the extrudate after removal from the die of representative claim
14. For example, that extrudate, which may contain as few as two small veins or strands of syrup
containing confectionary material13, or only two relatively fat veins thereof stuffed therein14, can
13 The representative claim does not require that any more than a small fleck or two of particulate
syrup containing confection be used - enough to form two small streaks or veins thereof inserted
or interspersed in the chocolate.
14 While appellant seemingly urges otherwise, appellant has not established with objective
evidence that the term interspersed as used in the extrusion step in making appellant’s product
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