Trilateral Project 24.1-Biotechnology 162

During examination before the PTO, a product-by-process claim is treated as a product. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). If it is the same product, it is irrelevant how it is created. Thus, Y would anticipate Y'. However, once the Examiner creates a prima facie case of anticipation, the applicant can come forward with factual evidence indicating that Y and Y' are not actually the same. Often the recombinant product can be shown to have higher purity or some other attribute conferring patentability not found in the prior art. E.g., Scripps Clinic & Research Foundation V. Genentech, Inc., 927 F.2d 1565, 18 USPQ2d 1565, 18 USPQ2d 1001 (Fed. Cir. 1991).