Appeal No. 96-2425
Application 08/094,933
Appellants argue that Bolton’s removal of catalyst prior to
digestion reduces the potential for rearrangement of the
condensation reaction mixture to form unwanted compounds, and
that Bolton teaches that reducing the acid level during the
condensation stage has a significant effect on the level of
impurities in the product (brief, page 7).
Appellants, however, state that even though appellants do
not perform Bolton’s condensation stage partial
neutralization, to which Bolton attributes the low level of
impurities of his product, appellants’ product has impurity
levels which are comparable to those of Bolton’s product
(brief, pages 4, 6 and 8). Thus, appellants acknowledge that
their product is substantially the same as that of Bolton.
The patentability of a product made by a recited process,
as in appellants’ claim 9, is determined based on the product
itself, not on the method of making it. See In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985) (“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
-5-5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007