Appeal No. 1996-1529
Application No. 08/233,219
The patentability of a product-by-process claim is based on the product itself. Where, as here,
a product-by-process claim is rejected over a prior art product that appears to be the same or similar
to the claimed product, although produced by a different process, the burden is on applicants to
produce evidence establishing an unobvious difference between the claimed product and the prior art
product. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985); In re Marosi,
710 F.2d 799, 803, 218 USPQ 289, 292-93 (Fed. Cir. 1983). We also note that claims in a patent
application are given the broadest reasonable interpretation in light of the specification and limitations in
the specification are not read into claims without a proper claim basis therefore. In re Zletz, 893 F.2d
319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404, 162
USPQ 541, 550 (CCPA 1969).
Here, claim 17 requires a polymer of “controlled functionality.” The specification does not
define “controlled functionality” as any particular (range of) functionality, e.g., a functionality of 1.0, and
claim 17 does not recite any particular functionality, e.g., a functionality of 1.0. Further, claim 17 is not
limited to any particular molecular weight polymer. As to molecular weight, the specification states that
“higher molecular weights in range from approximately 1,000 to approximately 50,000 are more readily
obtainable” (page 9, lines 12-14). Therefore, since Wardle has provided specific direction to enable
both polymer functionality and molecular weight to be controlled (see e.g., cols. 7-8), has provided
energetic polymers of controlled polymer properties, including functionality and molecular weights
within the range of higher molecular weights recited in the specification, we find that the examiner has
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