Appeal No. 97-2504
Application 08/200,707
it would have been obvious to include such a layer on the Cocco
container casing. Appellants argue that the claims require that
the protective layer be “printed on” the colored layer, and this
condition is not suggested by either Cocco or Sugaya [brief,
pages 5-6]. The examiner responds that the “printing” of this
layer is a process limitation which is not relevant to the
obviousness of the product claimed. Appellants dispute the
examiner’s claim interpretation.
The examiner’s reliance on “product by process”
principles in the examination of the appealed claims is misplaced
here. The principle relied on by the examiner is that the
process of making cannot be used to patentably distinguish a
product which appears to be structurally the same as a prior art
product. Before this principle can be used, however, it is
necessary to establish that two products are structurally
identical to each other. The examiner’s finding that the
protective layer 36 of Cocco which is clamped onto the colored
layer 35 is structurally the same as a protective layer which is
“printed on” the colored layer is clearly flawed. The protective
layer of Cocco not only would structurally appear different from
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