Appeal No. 2005-1558
Application No. 09/949,704
The examiner has relied on Tesvich et al. (Tesvich ‘064), U.S. Patent No.
5,773,064, issued on June 30, 1998, as the sole evidence of unpatentability. Appellant
has relied on Tesvich et al. (Tesvich ‘601), U.S. Patent No. 5,976,601, issued on Nov. 2,
1999, as evidence for patentability (Brief, page 10; Exhibit 5). Claims 5 and 27-38 stand
rejected under 35 U.S.C. § 102(e) as anticipated by Tesvich ‘064 (Answer, page 3).
Based on the totality of the record, we affirm the examiner’s rejection on appeal
essentially for the reasons stated in the Answer, as well as those reasons set forth
below.
OPINION
The examiner finds that Tesvich discloses a raw shellfish product free of
pathogenic bacteria, including Vibrio vulnificus bacteria, where the shellfish is an oyster
with a flexible band closing its shell kept at a refrigerated temperature, and is presented
to the consumer in its shucked state (Answer, page 4). The examiner notes that the
claims are recited in product-by-process format and that patentability is determined
based on the product itself, not the method of producing the product (id.). Therefore the
examiner finds reasonable belief that the product of Tesvich ‘064 is the same as the
claimed product (id.).
Appellant agrees with the examiner that the claims on appeal are written in the
product-by-process format (Brief, unnumbered page 6; Answer, page 4). Appellant also
agrees that, with such a claimed format, it is the patentability of the product which must
be determined, not the process of making the product (id.; see In re Hirao, 535 F.2d 67,
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007