Appeal No. 96-1207
Application No. 08/064,203
There is no dispute that the applied references disclose
all of the claimed structure. The only issue on appeal is the
weight to be given to the process step of "said silicon
dioxide layer being formed by low pressure chemical vapor
deposition comprising
the use of tetraethylorthosilicate" in each of the claimed
products. It is the examiner's position (Answer, page 4)
that:
With regard to the process limitations within
Claims 13, 14, and 16, the applicant is reminded
that it is the patentability of the final product
per se which must be determined in a "product by
process" claim, and not the patentability of the
process, and that, as here, an old or obvious
product produced by a new method is not patentable
as a product, whether claimed in "product by
process" claims or not. See In re Thorpe, 227 USPQ
964.
In assessing the patentability of product-by-process
claims, the Court stated in In re Brown, 459 F.2d 531, 535,
173 USPQ 685, 688 (CCPA 1972) that:
[T]he lack of physical description in a product-by-
process claim makes determination of the patentability
of the claim more difficult, since in spite of the
fact that the claim may recite only process
limitations, it is the patentability of the product
claimed and not of the recited process steps which must
be established. We are therefore of the opinion that
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