Appeal No. 1996-2874
Application No. 08/027,849
dispute that Archer would have rendered a tube having “an
inner layer of thermoplastic and an outer layer of typically
fiber-reinforced reaction resins, such as epoxy resins”
obvious to one of ordinary skill in the art. Compare Answer,
page 4 with Brief, pages 7-9. Appellant only argues the
patentability of the claimed subject matter based on the
product-by-process limitation set forth in claim 13, which
reads as follows:
an outer layer of fiber-reinforced reaction resin
cured by exposure to light and at a temperature
between approximately 20 and 60 C.o
The dispositive question is therefore whether this
product-by-process limitation imparts patentability to the
claimed product, i.e., a tubular body. We answer this
question in the negative.
The court provides guidance for analyzing the
patentability of product-by-process claims in In re Thorpe,
777 f.2d 695, 697, 227 USPQ 964, 965-66 (Fed. Cir. 1985) as
follows:
Product-by process claims are not specifically
discussed in the patent statute. The practice and
governing law have developed in response to the need
to enable an applicant to claim an otherwise
patentable product that resists definition by other
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