Appeal No. 98-2456
Application No. 08/748,158
It is by now well settled that product claims may be
drafted to include process steps to wholly or partially define
the claimed product, and that to the extent that the process
limitations distinguish the claimed product from the prior
art, they must be given the same consideration as traditional
product characteristics or limitations. See In re Hallman,
655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981). This type
of claim is referred to as a product-by-process claim and, as
noted in In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972), does not inherently conflict with the second
paragraph of 35 U.S.C. § 112. However, due to the lack of
physical description in a product-by-process claim, this form
of claim does impose a certain burden with regard to
determining the patentability thereof, since in spite of the
fact that the claims may recite only process limitations, it
is the patentability of the product claimed and not the
recited process steps which must be established. Accordingly,
when the prior art discloses a product which reasonably
appears to be either identical with or only slightly different
than a product claimed in a product-by-process claim, a
rejection based alternatively on either section 102 or section
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