Appeal No. 2003-1406 Page 6
Application No. 09/335,723
that called for in appellant’s product-by-process claim 18, we
note that the patentability of such claims is determined based on
the product itself. 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,
where, as here, appellant’s product and that of the prior art
appear to be identical or substantially identical, the burden
shifts to appellant to provide evidence that the prior art
product does not necessarily or inherently possess the relied
upon characteristics of appellant’s claimed product. See In re
Spada, 911 F.2d 705, 708, 15 USPQ 1655, 1658 (Fed. Cir. 1990);
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 In re Best, supra;
In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
This, appellant has not done.
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