Appeal No. 2005-1558
Application No. 09/949,704
69, 190 USPQ 15, 17 (CCPA 1976); and In re Wertheim, 541 F.2d 257, 271, 191
USPQ 90, 103 (CCPA 1976)). As held by a predecessor of our reviewing court:
... 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. We are therefore of the opinion that 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 alternatively on either section 102 or
section 103 of the statute is eminently fair and acceptable. As a practical
matter, the Patent Office 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), emphasis in original.
In Brown, the court was in effect saying that the Patent Office bears a lesser burden of
proof making out a case of prima facie unpatentability for product-by-process claims
because of their peculiar nature than would be the case when a product is claimed in
the more conventional fashion. See In re Fessmann, 489 F.2d 742, 744, 180 USPQ
324, 326 (CCPA 1974).
We agree with the examiner that the product of Tesvich ‘064 reasonably appears
to be identical to the product recited in claim 5 on appeal. The raw shellfish of claim 5
on appeal is (1) post-pressurized and pressure shucked; (2) free from pathogenic
naturally-occurring marine bacteria; and (3) retains the sensory characteristics of raw
product (see claim 5 on appeal as reproduced above). Tesvich ‘064 discloses raw
shellfish which has been (1) shucked (col. 3, ll. 5-7 and 61-65); (2) is free of harmful
pathogenic bacteria (reduced to undetectable levels; col. 2, l. 65-col. 3, l. 1; col. 3, ll. 45-
4
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