Appeal No. 2006-0551 Παγε 9
Application No. 10/182,904
established that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982).
Appellants argue on pages 8-9 of the brief that Westre does not teach "laying-up
at least one further layer" so as to "enclose the composite reinforcing member." This
argument is ostensibly grounded on appellants' position that Westre does not teach the
steps of forming and positioning a composite reinforcement member as discussed
above (brief, page 9; reply brief, page 6) and is thus unpersuasive for the reasons
discussed above.
Appellants' argument on pages 9-10 of the brief that Westre's disclosure of
interleaving foil layers between the composite layers somehow teaches away from the
method recited in claim 1 is not well taken. Nothing in claim 1 excludes the presence of
foil layers as any of the plurality of layers recited in claim 1.
In light of the foregoing, the examiner's rejection of claim 1 as being anticipated
by Westre is sustained. The like rejection of dependent claims 3 and 65, as well as the
rejection of claim 4 as being unpatentable over Westre, are also sustained since
5 Claim 6 is directed not to a method, but to a laminated member reinforced using a method
according to claim 1. It is thus a product-by-process claim. We note, in this regard, that the patentability
of a product does not depend on its method of production. 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 art
product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985). Thus, even assuming that the method of appellants' claim 1 were deemed to be distinct from
Westre's process of making the hybrid layer, the laminated member of claim 6 is unpatentable over the
hybrid layer of Westre if it is the same as or obvious in view of Westre's hybrid layer.
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