Appeal No. 1999-2029 Page 11
Application No. 08/431,360
The appellants rely on the method limitation of causing
the substrate to emit heat as patentably distinguishing over
the teachings of Phelps. We do not agree for the reasons that
follow.
The appellants have not pointed out any structural
difference that would differentiate the occlusive device of
claim 7 from the occlusive device taught by Phelps. In
addition, the product-by-process limitation set forth in claim
7 (i.e., "secured to said substrate by causing said substrate
to emit heat") does not affect the product itself (i.e., the
claimed occlusive device) and therefore cannot impart
patentability to the product. See In re Thorpe, 777 F.2d 695,
698, 227 USPQ 964, 966 (Fed. Cir. 1985) (Even though
product-by-process claims are limited by and defined by the
process, determination of patentability is based on the
product itself. The patentability of a product does not
depend on its method of production. If the product in the
product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even
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