Appeal No. 2005-1608 Page 5
Application No. 10/424,327
F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972)(Court recognized that claims to a catalyst
which is "oxygen-activated" and comprises silver which is a "thermal decomposition product of
a pore solution-deposited silver salt” were product-by-process claims.).
Appellants further attempt to distinguish the facts here from those in the case relied upon
by the Examiner, i.e., In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). But the fact
that claim 1 is not solely reciting the product in terms of process steps as was the claim of In re
Thorpe does not transform the process limitation at issue here into a structural limitation. In fact,
Thorpe cites Brown for the idea that even though product-by-process claims are limited by and
defined by the process, determination of patentability is based on the product itself. Any
process-based limitation is subjected to the analysis mandated by Thorpe, Brown and other cases
cited therein. Those cases stand for the proposition that once the PTO provides a reasonable
basis to conclude that the prior art that appears to be identical or substantially identical, although
produced by a different process, the burden is upon the applicants to come forward with
evidence establishing an unobvious difference between the claimed product and the prior art
product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Best,
562 F.2d at 1255, 195 USPQ at 433-34; In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972). The fairness of this burden shift is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art products. Best, 562 F.2d at 1255, 195
USPQ at 434; Brown, 459 F.2d at 535, 173 USPQ at 688.
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