Appeal No. 1996-2626
Application No. 08/286,046
The examiner acknowledges that Jones "fails to specify the antistatic agent of
instant claim 20 and rosin of instant claim 21." Id.
The examiner cites Burditt as disclosing (Answer, page 4)
liquid additive concentrate for incorporation into plastics. Such an additive is
comprised of an organic rosin material, a surfactant and a colorant or other
additive. This reference teaches rosin of instant claim 21.
The examiner cites Burton as disclosing anti-static agents useful in the preparation
of polymeric fibers which fall within the scope of claim 18. Id.
The examiner then concludes that (id.)
it would have been obvious to a person of ordinary skill in the art to use the
anti-static agent of Burton as an additive to prepare a concentrate of it (as
taught by Burditt) with rosin and surfactant and then use this concentrate with
nylon into (sic, in) the process of Jones to impart anti-static properties to the
nylon fibers so produced by that process.
Claim 18, in product-by-process format, is directed to a polymeric fiber containing
an anti-static agent. It is established law that even though the product of a product-by-
process claim is defined at least in part by the recited process steps, 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 though the prior
product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ
964, 965-66 (Fed. Cir. 1985). On the record before us, the examiner has established that,
at the time of the invention, polymeric fibers containing anti-static agents were known
(Jones and Burditt) and that polyoxyethylene alkylamine anti-static agents (Burton) were
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