Appeal 2007-1169
Application 09/850,857
KSR at 1740, 82 USPQ2d at 1396. As recognized in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR at 1742, 82 USPQ2d at 1397.
On appeal, Applicant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
the prior art. Applicant may sustain its burden by showing that where the
Examiner relies on a combination of disclosures, the Examiner failed to
provide sufficient evidence to show that one having ordinary skill in the art
would have done what Applicant did. United States v. Adams, 383 U.S. 39
(1966); In re Fridolph, 134 F.2d 414, 416, 57 USPQ 122, 124 (CCPA 1943)
(does the prior art suggest doing the thing which the appellant has done?)
Additionally, a product that is defined at least in part in terms of the
method or process by which it is made represents a product-by-process
claim. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 159 n.,
9 USPQ2d 1847, 1855, n. (1989). In construing a product-by-process claim,
the Federal Circuit has 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.” In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985).
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