Appeal No. 1997-3443
Application No. 08/595,901
Appellant argues that Baker does not teach or suggest electrically conductive material
damaging the lattice structure by extending into said lattice structure. This is a process limitation
which is entitled to no patentable weight in appellant’s apparatus claim. Appellant has
effectively admitted that process limitations in product claims are entitled to no weight at page 2
of his reply brief filed July 8, 1997 (Paper No. 14) wherein he states,
[h]owever, after correctly stating that “a ’product by process’ claim is directed to
the product per se”, the Examiner then erroneously implies that the end product is
the same as in Baker.
Furthermore, when the prior art discloses a product which reasonably appears to be either
identical with or only slightly different than a product claimed in a product-by-process claim, a
rejection based alternatively on either section 102 or section 103 of the statute is eminently fair
and acceptable. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
To the extent that appellant is arguing that Baker does not disclose damaged regions, his
position is unpersuasive. The n-type regions 13b of Baker are damaged regions of the lattice
structure and they are adjacent to the electrically conductive material 23. The damage occurs
during manufacture when the n-type regions are formed from p-type regions by ion
bombardment.
Appellant’s attack on the examiner’s reference to U.S. Patent 4,411,732 to Wotherspoon
in his answer is of no import because the reference is unnecessary to the rejection1. The
examiner merely notes that Wotherspoon details the conversion of p-type cadmium mercury
1 Wotherspoon is specifically incorporated by reference in Baker
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