Appeal No. 2004-0647 Page 6
Application No. 09/941,965
weights of any of the acid hydrolyzed samples, nor do we see anything to indicate that
any of the acid hydrolyzed samples were centrifuged and decanted after they were
neutralized.
Nevertheless, it is well settled that “[t]he patentability of a product does not
depend on its method of production[;]” “[i]f the product . . . is the same as . . . a
product of the prior art, the claim is unpatentable even though the prior product was
made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966
(Fed. Cir. 1985) (citations omitted). Moreover, while “the Patent Office has the initial
burden of coming forward with some sort of evidence tending to disprove novelty” In re
Wilder, 429 F.2d 447, 450, 166 USPQ2d 545, 548 (CCPA 1970), an exception has
been recognized where a reference does not address every element of a claimed
product, but the evidence available to the examiner is consistent with a finding that “the
claimed and prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes.” In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433-34 (CCPA 1977). In that case (id.)
the PTO can require an applicant to prove that the prior art products do
not necessarily or inherently possess the characteristics of his claimed
product . . . . Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly
or alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products [footnote omitted].
Here, there is nothing to indicate that any of Hatta’s acid hydrolyzed samples
were centrifuged and decanted after they were neutralized, so it is reasonable to
conclude that Hatta’s acid hydrolyzed samples and the claimed composition were not
“produced by identical or substantially identical processes” (id.). Nor has the examiner
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