Ex Parte Schlegel et al - Page 5

                Appeal 2007-4098                                                                               
                Application 09/962,887                                                                         
                      The dispositive question is, therefore, whether the claimed process or                   
                method limitation would have rendered the claimed pellet patentably                            
                distinguishable over the pellet taught by Klabunde within the meaning of                       
                35 U.S.C. § 102(b).  On this record, we answer this question in the negative.                  
                      As stated in In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688                           
                (CCPA 1972):                                                                                   
                      [T]he lack of physical description in a product-by-process claim                         
                      makes determination of the patentability of the claim more                               
                      difficult, since in spite of the fact that the claim may recite only                     
                      process limitations, it is the patentability of the product claimed                      
                      and not of the recited process steps which must be                                       
                      established….[W]hen the prior art discloses a product which                              
                      reasonably appears to be either identical with or only slightly                          
                      different than a product claimed in a product-by-process claim,                          
                      a rejection based alternatively one either section 102 or section                        
                      103 of the statute is eminently fair and acceptable.  As a                               
                      practical matter, the Patent Office is not equipped to                                   
                      manufacture products by the myriad of processes put before it                            
                      and then obtain prior art products and make physical                                     
                      comparisons therewith.                                                                   

                Consistent with Brown, the Examiner has demonstrated that the pellet taught                    
                by Klabunde “reasonably appears to be either identical with or only slightly                   
                different than” the claimed pellet.  As indicated supra, there is no dispute                   
                that Klabunde describes a pellet useful for a fluid medium (gas or liquid),                    
                having the claimed ingredients.  Klabunde also teaches preparing pellets in                    
                methods similar to that claimed (cols. 4-11, Examples 1-3).  Klabunde’s                        
                Examples 1 and 2 show forming powder from an aerogel and pressing the                          
                powder in a small hydraulic press at 1000 and 2000 psi to make spherical                       
                pellets having a diameter of 12 mm (col. 4-9).  The pellets formed are then                    
                activated at 500oC (Klabunde, cols. 6 and 7).  Klabunde’s Example 3 also                       

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