Appeal No. 1996-0858 Page 10
Application No. 08/117,648
535, 173 USPQ 685, 688 (CCPA 1972) and In re Pilkington, 411
F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969) that
product-by-process claims are not specifically discussed
in the patent statute. The practice and governing law
have developed in response to the need to enable an
applicant to claim an otherwise patentable product that
resists definition by other than the process by which it
is made. For this reason, even though product-by-process
claims are limited by and defined by the process,
determination of patentability is based on the product
itself. (citations omitted)
The patentability of a product does not depend on
its method of production. (citation omitted) If 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. (citations omitted)
Thus, the patentability of a product does not depend on
its method of production. If the product in a
product-by-process claim would have been obvious from or
anticipated by a product of the prior art, the claim is
unpatentable even if the prior product was made by a different
process.
Based on the record before us, we cannot ascertain any
patentably significant difference between the product cotton
toweling defined by claim 17 and the corresponding product of
the admitted prior art. In this regard, claim 17 defines a
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