Appeal No. 96-1615
Application 08/249,650
As to the rejection under the first paragraph of 35
U.S.C.
§ 112, it appears that the statement at page 11 of the answer
best expresses the examiner’s view "whether there is enough
structural support in the claimed product in order to achieve
the functional limitations as claimed. Applicants are
claiming a product for what it does rather than for what the
product is."
We reverse this rejection since we are in general
agreement with the positions of appellants in the brief and
the reply brief. They properly rely upon In re Swinehart, 439
F.2d 210, 169 USPQ 226 (CCPA 1971) which appears to answer the
examiner’s just noted criticisms by indicating that there is
nothing intrinsically wrong in defining something by what it
does rather than by what it is. Note also In re Hallman, 655
F.2d 212, 210 USPQ 609 (CCPA 1981). The examiner’s position
appears to be requiring the appellants to structurally claim
the specific forty some layers of coating material in a
specific configuration as a basis of removal of the rejection.
This is not required. Each independent claim on appeal is,
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