Appeal No. 2005-0620
Application 10/010,202
in Franke” (brief, page 10). The appellants are incorrect. The
patentability of an invention claimed as a product-by-process 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 appellants’ product and that
of the prior art appear to be identical or substantially
identical, the burden shifts to the appellants to provide
evidence that the prior art product does not necessarily or
inherently possess the relied-upon characteristics of the
appellants’ 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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