Appeal No. 2006-0916
Application No. 10/345,711
Claim 36
With respect to product-by-process claim 36, it has long
been held that “‘[i]f 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 product was made by
a different process.’” Smithkline Beecham Corp. v. Apotex
Corp., No. 04-1522 slip op. at 9 (Fed. Cir. February 24,
2006)(quoting In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985)).
It is also well settled that when a claimed product
reasonably appears to be substantially the same as a product
disclosed in the prior art, the burden of proof is on the
applicants to prove that the prior art product does not
inherently or necessarily possess the characteristics attributed
to the claimed product. Cf. In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990)(holding that similarity in
terms of reactants and reaction conditions amounted to a prima
facie case of unpatentability and that the burden was properly
shifted to applicants to show that the prior art product does
not have the claimed property); see also In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Whether the
rejection is based on inherency under 35 U.S.C. § 102 or on
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