Appeal No. 2000-0314
Application No. 08/944,192
OPINION
We have carefully considered the entire record before us,
and we will reverse the 35 U.S.C. § 102(b) rejection of claim
15, and the 35 U.S.C. § 103(a) rejection of claims 1 through
14 and 16.
Turning first to the anticipation rejection of claim 15,
the examiner indicates (answer, page 4) that Hoshino discloses
all of the limitations of product claim 15 except for the
photolithographic process and the laser process for making the
vias in the photoimaged dielectric layer and the non-2
photoimaged dielectric layer, respectively. According to the
examiner (answer, page 4), the “presence of process
limitations in product claims, which product does not
otherwise patentably distinguish over prior art, cannot impart
patentability to that product.” When the claimed invention is
to a product, it is the patentability of that product that is
determined, not the method by which it is made. In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). If the
2Hoshino indicates (translation, pages 6, 14, 17, 18 and
21) that the vias in the two dielectric layers are formed by
chemical means.
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007