Appeal No. 2001-0607
Application No. 09/244,429
arrangement comprises a plurality of silicon-based layers and has
a thickness of no greater than about 800 D.”
With regard to the product-by-process arguments of
appellants and the examiner, we agree with the examiner that a
determination of patentability in “product-by-process” claims is
based on product itself, even though such claims are limited and
defined by process, and thus the product in such a claim is
unpatentable if it is the same as, or obvious from, product of
the prior art, even if the prior product was made by different
process. It would not be error to affirm an examiner’s rejection
of “product-by-process” claims, absent proof by applicant that
prior art products do not necessarily or inherently possess
characteristics of his claimed product. In re Thorpe, 777 F.2d
695, 227 USPQ 964 (Fed. Cir. 1985).
However, the examiner must first show that the claimed
structure, or the product itself, exists in the prior art. Since
it is our view that the structure of claim 18, with regard to the
specifically claimed control gate arrangement, has not been shown
to be in the prior art or suggested by the prior art, we never
get to the product-by-process claims 24 and 25.
It may be true that it is appellants’ unique process which
enables such a small thickness for the multi-layered control gate
-9–
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