Appeal No. 2000-1213
Application No. 08/566,006
USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d
1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v.
Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61
(2d Cir. 1935).
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. In re Marosi, 710 F.2d 799, 803, 218
USPQ 289, 292-93 (Fed. Cir. 1983); Johnson & Johnson v.
W.L. Gore, 436 F.Supp. 704, 726, 195 USPQ 487, 506 (D.
Del. 1977); see also In re Fesssman, 489 F.2d 742, 180
USPQ 324 (CCPA 1974).
Here, appellant does not dispute the examiner’s finding that
the applied prior art references individually teach the claimed
cellular flexible retroreflective sheeting, except for the claimed
process limitation, i.e., ultrasonic welding. See Brief in its
entirety. Appellant argues that the claimed process limitation
renders the claimed cellular flexible retroreflective sheeting
patentably distinguishable over those described in the applied
prior art. See Brief, pages 3 and 4. Specifically, appellant
argues (Brief, page 4) that:
[T]he recitation in claim 8 of “welds” formed by
ultrasonic fusing clearly distinguishes applicant’s
product as a product having ultrasonic welds, as opposed
to bonded regions formed by other different methods
taught by the prior art. Thus, the process limitation in
the claim clearly helps to distinguish over the prior art
products. In such a circumstance, the process limitation
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