Appeal No. 95-4648
Application No. 07/952,137
Appellants also submit that “[n]either of the references
[Kobayashi or Kumazawa] teach or suggest alone or in
combination the article of Applicants’ Claim 28 as prepared by
the requirements of that claim.” (Brief, page 5, emphasis
added).
Appellants’ arguments are not well taken since claim 28
is drawn to a product-by-process. Concerning product-by-
process claims, it is the patentability of the products
defined by these claims, and not the processes for making
them, that must be gauged in light of the prior art. In re
Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103 (CCPA 1976).
The court has made the following observation4 regarding the
patentability of product-by-process claims:
We are therefore of the opinion that when 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 on either section
102 or 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
4In re Fessman, 489 F.2d 742, 744, 180 USPQ 324, 325 (CCPA
1974), quoting from In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972).
4
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