Appeal 2006-2730
Application 10/415,631
For at least the above reasons, we will sustain the Examiner’s
anticipation rejection of independent claim 11. Since Appellants have not
separately argued the patentability of dependent claims 12-16 and 21, these
claims fall with independent claim 11. See In re Nielson, 816 F.2d 1567,
1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987). See also 37 C.F.R.
§ 41.37(c)(1)(vii).
Regarding claim 22, Appellants argue that the Examiner improperly
declined to give patentable weight to the limitation calling for a molded
wave surface of the elastomeric body. Appellants contend that a molded
wave area is structurally distinct from a non-molded wave area. In this
regard, Appellants contend that a molded wave area will have a different
grain or flow pattern and different surface characteristics than a textured area
formed by the pre-strained interaction of two materials as in Pelrine (Br. 7;
Reply Br. 4).
At the outset, we note that the limitation calling for a “molded wave
surface” (emphasis added) is a product-by-process limitation since the term
“molded” merely recites how the wave surface was formed. It is well settled
that reciting how a product is made does not further limit the structure of the
product itself. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.
Cir. 1985) (citations omitted). But we also must consider structure implied
by the recited process steps, especially where the (1) the product can only be
defined by the process steps by which the product is made, or (2) the process
steps would be expected to impart distinctive structural characteristics to the
final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221,
223 (CCPA 1969). See also MPEP § 2113.
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