Appeal No. 97-2715
Application No. 08/306,797
Pursuant to our authority under Rule 1.196(b), we make
the following new rejection:
Claim 7 is rejected under 35 U.S.C. § 103 as being
unpatentable over Kostner.
Claim 7 is a product-by-process claim. The guidance that
has been provided to us by our reviewing court on this matter
is
[i]f 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
product was made by a different process.3
Applying this direction, the process limitations in claim 7
fall by the wayside, which leaves for our consideration only
“[a] shirred food casing strand having a length and an
external surface.”
Both the appellants and Kostner have directed their
inventive efforts to solving the same problems present in
shirred food casing strands, and they have done so by methods
which include contacting the outer surface with a plurality of
rollers. While the methods differ, as we have pointed out
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.3
Cir. 1985).
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