Appeal No. 2000-0002
Application 08/848,477
claims. That is, appellant's claimed "iron-rich residue", a
hematite complex, is described by the steps necessary for its
manufacture. It is by now well-understood that, even though a
product-by-process is defined by the process steps by which
the product is made, determination of patentability is based
on the product itself. In re Thorpe, 777 F.2d 695, 227 USPQ
964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d
at 697, 227 USPQ at 966:
The patentability of a product does not depend on its
method of production. In re Pilkington, 411 F.2d 1345,
1348, 162 USPQ 145, 147 (CCPA 1969). 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.
(citations omitted).
Nevertheless, we are not free to ignore the process by which
appellant's product is made in considering the prior art
because we must consider all appellant's claim limitations in
reaching our final determination of patentability.
We shall first address the rejections over McElroy. While
we recognize that alternative rejections under 35 U.S.C. §§
102/103 have been sanctioned by one of the predecessors to our
reviewing court, the basis for the court's approval of this
practice was based on the PTO's inability to make and test an
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