Appeal No. 2002-1622 Page 6
Application No. 08/735,836
evidence may be considered when it is used to explain, but not expand, the meaning of an
anticipatory reference). We affirm as lack of novelty is the ultimate or epitome of obviousness.
In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
Claim 38
Claim 38 is directed to a mixture made by a process of blending polymer (a) and polymer
(b) in the absence of a solvent. This claim is in product-by-process format. “In order to be
patentable, a product must be novel, useful and unobvious. In our law, this is true whether the
product is claimed by describing it, or by listing the process steps used to obtain it.” In re
Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). “[D]etermination of patentability
is based on the product itself.” In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985). “The patentability of a product does not depend on its method of production.” Id.
The Examiner has provided a reasonable basis to believe that the mixture of polymers
described by Birkholz is the same or substantially the same as that claimed. As pointed out by
the Examiner, while Birkholz mixes the polymers in the presence of solvent, that solvent is
removed (Answer at 5). Whether the mixture is made in the absence of solvent or the solvent is
removed, the products appear to be identical or substantially identical as each would lack
solvent. “Where a product-by-process claim is rejected over a prior art product that
appears to be identical, although produced by a different process, the burden is upon the
applicants to come forward with evidence establishing an unobvious difference between the
claimed product and the prior art product.” In re Marosi, 710 F.2d 799, 803, 218 USPQ 289,
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