From the decision Ex parte Burns:
The claims are drafted in product-by-process format. “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.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted).
An obviousness determination requires that a skilled artisan would have perceived a reasonable expectation of success in making the invention in light of the prior art. Amgen Inc. v. F. Hoffman-LA Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir. 2009) (citing In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)).
The appellants win a reversal:
In sum, Appellants have persuasively argued the Examiner’s fact finding and reasoning is insufficient to support a prima facie case of obviousness as to appealed claims 1-12.