Appeal No. 97-3669
Application 08/391,745
“the adhesive layer can be caused to diminish as a result of a
photodecomposing reaction.” That language is indicative of a
much more gradual, stable, and controlled degradation of the
adhesive layer than the kind of all or none type decomposition
described in the appellants’ specification. The decomposition
described in the appellants’ specification evidently pulverizes
electrode material into fine particles capable of suspension in
the atmosphere (Spec. Page 4, lines 1-3), whereas Aoyama’s
photodecomposing reactions would leave electrode material
essentially intact for subsequent removal by peeling.
For the foregoing reasons, the anticipation rejection of
claims 4, 5, 8 and 27 cannot be sustained.
Claim 28, on the other hand, is a product-by-process claim,
which means the appellants have the burden of establishing that
the process further limits the structure. In re Thorpe, 777 F.2d
695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). In other words,
the process by which the product is made does not render
patentability to the product claimed if the product is the same
as that disclosed by the prior art. That is the case here. Claim
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