Appeal No. 1999-0764
Application 08/745,199
Accordingly, we remand this application to the examiner to apply Krutenat and any other
applicable prior art developed by the examiner to appealed claims 11 through 14 which are
drawn to a metal alloy product having an aluminum and silicon diffusion coating on at least one
surface, characterized as prepared by the method of appealed claim 1. The patentability of
method claims and of product claims styled in product-by-process format based on the claimed
method, see, e.g., In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985), are
separate issues as the patentability of the claimed method does not confer patentability on the
product made therewith. See In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103 (CCPA
1976) (“These claims are cast in product-by-process form. Although appellants argue,
successfully we have found, that the [reference] disclosure does not suggest . . . appellants’
process, the patentability of the products defined by the claims, rather than the processes for
making them, is what we must gauge in light of the prior art.”).
We find that one of ordinary skill in this art in routinely following the teachings of
Krutenat by using aluminum, silicon and a halide activator to prepare aluminum-silicone coatings
on metal substrates would have reasonably arrived at metal alloy products having an aluminum
and silicon diffusion coating that prima facie reasonably appear to be identical or substantially
identical to the metal alloy products having an aluminum and silicon diffusion coating defined in
product-by-process style in at least appealed claim 11, even though the product of claim 11 is
characterized as produced by a method which utilizes a different halide activator. When the
examiner makes the rejection on the record that, prima facie, the claimed products are identical
or substantially identical to the products produced by the method of Krutenat and/or other applied
prior art, the burden would then shift to appellants to establish by effective argument and/or
objective evidence that the claimed products patentably distinguishes over the teachings of
Krutenat and/or other applied prior art, whether the rejection is based on “anticipation” under §
102(b) and/or on “prima facie obviousness” under § 103(a), jointly or alternatively. See, e.g., In
re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990) (“The Board held
that the compositions claimed by Spada ‘appear to be identical’ to those described by Smith.
4 Claims 12 and 14 are duplicates. In the event that these claims are held to be allowable, see
Manual of Patent Examining Procedure § 706.03(K) Duplicate Claims (8th ed., August 2001;
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