Appeal 2007-4099
Application 09/962,935
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.”). On this record, we find that the Appellant has not
relied on any evidence to rebut the prima facie case of anticipation
established by the Examiner (Br. 9-11)4.
Accordingly, based on the factual findings set forth in the Answer and
above, we are constrained to agree with the Examiner that Klabunde renders
the subject matter defined by claims 1 through 4 and 19 anticipated within
the meaning of 35 U.S.C. § 102(b).
OBVIOUSNESS
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations (e.g.,
unexpected results). Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
17-18, 148 USPQ 459, 467(1966). “[A]nalysis [of whether the subject
matter of a claim would be obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007) quoting In re
4 Even if we must consider the evidence relied upon by the Appellant in
rebutting the Examiner’s § 103 rejection in the context of the Examiner’s
§ 102(b) rejection, we are not convinced that the Appellant has demonstrated
that the pellets encompassed by the claims on appeal are patentably different
from those taught by Klabunde for the factual findings set forth in the
Answer and infra.
7
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