Appeal No. 2002-1600
Application 09/350,858
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 different process.”).1 Whether a rejection
is under 35 U.S.C. § 102 or § 103, when the appellants’ product
and that of the prior art appear to be identical or substantially
identical, the burden shifts to the appellants to provide
evidence that the prior art product does not necessarily or
inherently possess the relied-upon characteristics of the
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, 433-34 (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, 562 F.2d at 1255, 195 USPQ at 434;
In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
The appellants have not provided such evidence.
1 Hence, the appellants’ argument that “Claim 19 is a
product by process requiring a ceramic dispersoid formed by the
method of the present invention” is not well taken.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007