Appeal 2007-0504
Application 10/700,078
polymers made by a given process are the same as, or obvious in light of,
emulsion polymers made by another process” (Br. 5). Specifically,
Appellants argue that the data in Table 4.1 demonstrates that emulsion
polymers made by different processes have “large differences” in the scrub
resistance of the polymers (Br. 5).
We have considered and are not persuaded by Appellants’ arguments
for the reasons below.
Generally, “even though product-by-process claims are limited by and
defined by the process, determination of patentability is based on the product
itself. . . . 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 product was made by a different process” (citations
omitted). In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985). Once the Examiner provides a rationale tending to show that the
claimed product appears to be the same or similar to that of the prior art,
although produced by a different process, the burden shifts to applicant 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 (Fed. Cir. 1983); see also, In re King, 801 F.2d
1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986). Additionally, where the
Patent and Trademark Office has reason to believe that a functional
limitation in a product-by-process claim asserted to be critical for
establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
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