Appeal No. 2005-1024 Page 5
Application No. 10/156,291
unpatentable even though the prior art product was made by a different process. In re
Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
Once the PTO has made out a prima facie case that the applicant's claimed
product and the product of the prior art reasonably appear to be the same, the burden
shifts to the applicant to prove otherwise. Id. The burden of proof on the PTO in
making out a case of prima facie obviousness for product-by-process claims is less than
when a product is claimed in the more conventional fashion. In re Fessman, 489 F.2d
742, 744, 180 USPQ 324, 326 (CCPA 1974).
Moreover, the lack of physical description in a product-by-process claim makes
determination of the patentability of the claim more difficult, since in spite of the fact that
the claim may recite only process limitations, it is the patentability of the product claimed
and not of the recited process steps which must be established. Therefore, when the
prior art discloses a product which reasonably appears to be either identical with or only
slightly different than a product claimed in a product-by-process claim, a rejection based
alternately on either 35 U.S.C. § 102 or 103 is eminently fair and acceptable. As a
practical matter, the PTO is not equipped to manufacture products by the myriad of
processes put before it and then obtain prior art products and make physical
comparisons therewith. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA
1972).
In rejecting claims 26-28 as being anticipated by or, in the alternative,
unpatentable over Koeniger, the examiner asserts that the lens produced in accordance
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