Appeal No. 2006-1779
Application No. 10/249,810
is directed to an article, namely, a bag-shaped reclosable packaging container, and
not to a method of manufacturing said container.
The limitations of claim 1 that appellants’ argument seemingly addresses are
the recitations that the gussets are sealed at the upper ends by one of the first and
second connecting seams and between the first connecting flap and the front wall
or the second connecting flap and the back wall and wherein the gussets are
subsequently connected by a closure seam portion to at least one of the front wall
and the back wall in an area adjoining the upper edge which area, prior to insertion
and fixation of the closure device, was not connected to allow insertion of the
closure device. This sequence of the sealing steps recited in the claims is a
product-by-process limitation. The patentability of a product does not depend on
its method of production. If 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 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 USPTO has made out a prima
facie case that the appellants’ claimed product and the product of the prior art
reasonably appear to be the same, the burden shifts to the appellants 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). As a practical matter, the USPTO is not equipped
to manufacture products by the myriad of processes put before it and then obtain
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