Appeal No. 97-3246
Application 08/384,090
The examiner cites In re Hughes, 496 F.2d 1216, 182 USPQ
106 (CCPA 1974) for the proposition that when a product is
incapable of description by product claims which are of
different scope, an applicant is entitled to product-by-
process claims that recite the novel process as a hedge
against the possibility that the broader product claims may be
invalidated.
We are familiar with Hughes and do not see how that case
supports the examiner’s position that the claimed anodic
bonding limitation may be ignored. Whereas, in general,
process steps in a product claim may be ignored because
determination of patentability is based on the product itself
and not on the process of making that product, In re Thorpe,
777 F.2d 695,
227 USPQ 964 (Fed. Cir. 1985), Hughes establishes an exception
to that rule where the product is incapable of being described
solely by structure or physical characteristics.
In the instant case, it is the anodic bonding between the
thin glass sheet and the substrate that is said to give the
invention its improved characteristics over the prior PALCs.
There would appear to be no reasonable alternative ways to
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