Appeal No. 98-2122 Page 8
Application No. 08/607,886
Hilsey's wall actually is or might be used as such a wall
depends upon the performance or non-performance of a future act
of use, rather than a structural difference in the claims.
Stated differently, the wall of Hilsey would not undergo a
metamorphosis to a new wall simply because it was used as a
noise abatement wall. See In re Pearson, 494 F.2d 1399, 1403,
181 USPQ 641, 644 (CCPA 1974) and Ex parte Masham, 2 USPQ2d
1647, 1648 (Bd. Pat. App. & Int. 1987).
As to the limitation in claim 18 that the panel and
mounting post are vertically cast, claim 18 is directed to a
product (i.e., a wall section), and not to the method of making
the product. Thus, notwithstanding the "product-by-process"
recitation of "vertically cast," the determination of the
patentability of claim 18 is based on the wall section itself.
That is, the wall section defined by claim 18 is anticipated if
it is the same as the wall section of Hilsey, even if Hilsey's
wall section was made by a different process. See In re
Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claims 19-22 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hilsey. With respect to the embodiment of
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