Appeal No. 2003-1249
Application 09/386,972
REMAND
The appellant’s device claims are in product-by-process
form. Thus, 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 different process.”). Whether a rejection is under
35 U.S.C. § 102 or § 103, when the appellant’s product and that
of the prior art appear to be identical or substantially
identical, the burden shifts to the appellant to provide evidence
that the prior art product does not necessarily or inherently
possess the relied-upon characteristics of the 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, 433-34 (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).
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