Appeal No. 2003-1525
Application 09/462,876
The examiner argues that JP ‘068 discloses a cubic boron
nitride sintered compact having a 0.1-1 :m grain size which is
formed by sintering pure hexagonal boron nitride (hBN) at 2000ºC
and 7 GPa for 30 minutes (items 0010 and 0011) (answer, page 4).
The examiner acknowledges that Suzuki and JP ‘068 fail to
disclose the cBN sintered compact properties, other than average
grain diameter, recited in the appellants’ claim 1 (answer,
page 4). Nevertheless, the examiner argues that the cBN sintered
compacts of Suzuki and JP ‘068 are substantially identical to
that recited in the appellants’ claim 1 and that, because the
Patent and Trademark Office does not have facilities for testing
products, the burden has shifted to the appellants to show a
patentable difference between their recited cBN sintered compact
and those of Suzuki and JP ‘068 (answer, pages 4-5). The
examiner argues that this is a rationale “tending to show” that
the claimed product appears to be the same as or similar to that
of the prior art (answer, page 5).
When a claim is in product-by-process form 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
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